A Brief Analysis Of Infringement By Equivalence In Brazil

Author:Mr Marc Ehlers
Profession:Dannemann Siemsen Bigler & Ipanema Moreira

Firstly, it is a pleasure to submit this article as a contribution to those who attended the intellectual property training courses sponsored by the JPO and APIC.

The subject matter of this short article is related to the fact that during the patent specialists course I was able to acquire a better overview on how infringement by equivalence is applied in other countries, mainly, in Japan.

As it is known by professionals in the patent field, infringement by equivalence may, in theory, be argued by the patentee whenever a third party reproduces an object that has some differences from the claimed subject matter from a literal standpoint, but still reproduces the concept of the patented invention. In this case, a complex analysis must be conducted in order to determine whether these differences fall within the concept of the invention, and, consequently, determine if non literal infringement exists.

Infringement by equivalence may be determined by different criteria, as for example, the tripartite test that is mostly used in the United States, or even the obvious equivalent from the German practice. Even in countries which legislation does not expressly provide for infringement by equivalence, e.g. Japan, this type of non literal infringement may be applied, as in the famous decision of the Supreme Court of Japan in the ball spline case (Feb. 24, 1998) (Hensei 6(o) 1083, of 1994) (Page 17, Casebook of Intellectual Property Rights (2); Japan Patent Office).

In Brazil, on the other hand, infringement by equivalence is expressly provided in the Industrial Property Law-aw nr. 9279, as follows: "Article 186-The crimes of this Chapter are committed even if the violation does not affect all the claims of the patent or if it is restricted to the use of means equivalent to the subject matter of the patent."

Accordingly, in order to demonstrate non literal infringement in Brazil, it is necessary to evidence that the means or process used by the alleged infringer is equivalent to the patented subject matter. Based on the contents of article 186, in principle it would not be necessary to compare each particular element or step defined in the claim with the respective element or step in the infringing device or method, but only the whole invention with the infringing product or process. In other words, even if a specific feature defined in a claim is totally omitted from an infringing product, but this product can still be regarded as an overall...

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