To copy a product based on a patent application is a crime

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By Jomar Martins

It is not necessary that an invention or a process claiming the patent be entirely copied to characterized the violation of the intellectual property. The infringement may be evident even if the product is reproduced after part of the patent process. With this line of reasoning, 5th Civil Chamber of the the State Court of Appeals  Rio Grande do Sul affirmed the 1st instance ruling which determined Kühn Metasa to indemnify its competitor Semeato for having reproduced a compactor set for seeders.

The judgment affirming the 1st. instance ruling was issued on August 29, recognized that there has been a violation of Law 9.279/1996 – the Industrial Property Law -, more specifically, a patent infringement.

The decision signed by Judge Clovis Guimarães de Souza, of 5th Civil Court of Passo Fundo (RS) determined that Kühn Metasa refrains from making, using or selling products containing the technology developed by Semeato until 17 December 2012, when the 20-year term of protection of the patent granted by the Brazilian Patent and Trademark Office (INPI) will expire.

For material damages and cease of profits, Künh Metasa will have to pay 8% on all the businesses related to the machine, system, part, equipment or adaptation of the patent in corrected amount, to be calculated as of June 2004.

“If there is competition in the manufacture and marketing of the product, the losses can be verified through the loss of consumers, who have ceased to purchase the product made by the inventor to purchase the counterfeit product (imitated by counterfeiting.) Obviously, if there would be no counterfeit products, the sales of the invention by the inventor would have been much higher, since it is presumed that the patent owner would have manufactured and sold products all the products launched in the market by the infringer”, explained the judge.

Matching Theory

In Court, the rapporteur of the case, Justice Jorge Luiz Lopes Canto, explained that the contours of patent protection are expressed in two articles of the Industrial Property Law. According to Article 41 of the referred law, the extent of protection conferred by the patent” will be determined by the content of the claims, interpreted in light of the specification and drawings.” In turn, Article 25 states that the claims must be based on the specification,” specifying the particularities of the application and defining in a clear and accurate manner, the matter subject of protection”.

Citing Carla Eugenia Caldas’ doctrine, the Case Rapporteur considered that the claims encompass a restrictive interpretation, so that the scope of protection of the invention is not exceeded. ” Yet, even under the restrictive interpretation of the scope of the claim, there will be a legal protection when the violation is limited to part of the inventive act, according to the Theory of Equivalents”, he stated.

This theory is based on Article 186 of the Brazilian Industrial Property Law, which foresees: “The crimes [against patent] will be categorized even if the violation does not affect all the patent claims or is restricted to the use of means, which are equivalent to the subject of the patent”.

Based on the evidence brought to the Court, the judge was convinced that Kühn Metasa has improperly used the idea developed and patented by Semeato, taking advantage with it. “Thus, there is a clear characterization of counterfeiting in the compactor for seeding, fertilizing and planting, and the defendant must compensate the plaintiff for the losses incurred.”

The understanding was shared by justices Gelson Rolim Stocker and Isabel Dias de Almeida.

Jomar Martins is a correspondent of Consultor Jurídico in Rio Grande do Sul State.

In Consultor Jurídico, October 4, 2012



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