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Brazil: External Preclusive Effect in Intelectual Property Lawsuits. Inconsistente Case Law. The Need for the Issue to Be Submitted to the STJ

Intellectual property disputes often raise complex procedural questions, particularly at the intersection of IP law and civil procedure. One such issue is the inconsistent application of the external preclusive effect in infringement and nullity actions, calling for definitive guidance from the Superior Court of Justice.

Conflicts involving intelectual property (“IP”) frequently give rise to interesting discussions. Some of these controversies are predominantly procedural in nature, which highlights the interface between IP law and civil procedure law.[1]

In the field of IP, despite the relevance of this market sector, there are not many binding precedents issued by the Superior Court of Justice (STJ). Among those that stand out are Repetitive Themes 950[2] and 1065[3], as well as the Incident for Assumption of Jurisdiction No. 4.[4] The Second Section of the STJ has also established other important positions through rulings on “Embargos de Divergência” (a procedural appeal to harmonize conflicting case law) and Special Appeals.[5]

Nevertheless, there are recurring issues in IP litigation that should be settled by the STJ,[6] in the interest of equality and legal certainty.

One such issue concerns whether an infringement action pending before a State Court should be stayed due to the existence of a nullity action involving the same IP asset pending before a Federal Court. The matter is relevant, yet it is not treated homogeneously within the STJ, which results in legal uncertainty.

Before proceeding further, it is worth recalling that IP disputes essentially encompass infringement actions and nullity actions.

In infringement actions, the right owner seeks to prevent a third party from reproducing (or imitatingi) a given IP asset without authorization. Such actions are, generally, brought before State Courts – given the absence of a public entity involved in the dispute – and usually include claims for damages resulting from the unauthorized use of the asset.

In nullity actions, conversely, the objective is to invalidate the administrative act issued by the Brazilian Patent and Trademark Office (INPI) granting the IP title (e.g., patent, trademark registration, or industrial design). Law No. 9,279/96 expressly provides that nullity actions must be filed before the Federal Courts and that the INPI, when not acting as plaintiff, must intervene in the proceedings[7] (arts. 57 and 175).[8] This is a matter of exclusive jurisdiction due to the participation of the INPI (art. 109, I, of the 1988 Federal Constitution).

In practice, however, what is frequently observed is the coexistence of proceedings – that is, an infringement action pending before a State Court and a nullity action concerning the same IP asset pending before a Federal Court. Due to the exclusive jurisdiction of the Federal Courts, these lawsuits cannot be joined before the same court. Nevertheless, the existence of a logical relationship of subordination between the claims cannot be denied. As a result, if the Federal Court declare the patent null, for example (with ex tunc effects), the discussion regarding infringement of that patent before the State Court would be rendered moot.

In such cases, once the phenomenon known as external preclusive effect (prejudicialidade externa) is established,[9] it is possible to stay the affected action until the adjudication of the action containing the preclusive issue [10] (art. 313, V, “a”, of the Code of Civil Procedure – CPC). The maximum period for such a stay is one year (art. 313, §4, CPC).[11]

It should be noted, however, that according to the STJ, “the suspension of proceedings due to the existence of external preclusive effect with another action or incident is not mandatory; it is for the judge to assess, in the specific case, the plausibility of the stay in view of the circumstances.”[12]

Specifically in the IP field, the coexistence of these actions should not, in the abstract, automatically result in the suspension of the infringement action. In this regard, Luis Felipe Salomão and Caroline Tauk states that, since “the period of suspension of proceedings may never exceed one (1) year, pursuant to §4 of art. 313 of the CPC/2015, and since the nullity action is unlikely to reach a final decision within that timeframe, suspension may not be the best solution in all cases.”[13]

These caveats are particularly importantin light of certain peculiarities inherent to IP law.

At the outset, one must not lose sight of the fact that administrative acts issued by the INPI enjoy a presumption of legality and validity.[14] In the case of patents, e.g., the asset is granted after a lengthy administrative process involving technical analyses and a complex set of acts. Accordingly, once the matter is brought before the courts, the validity of the administrative act may only be reviewed by a court decision. Therefore, the mere filing of a nullity action is neither sufficient, in itself, to overcome the presumption of legality and validity of the INPI’s act – much less to justify the suspension of the infringement action.

From another perspective, practical experience shows that nullity actions are typically filed by the interested party after the infringement action has already been brought by the IP right owner.[15] Indeed, the intention of the defendant in the infringement action (and plaintiff in the nullity action) – without expressing any opinion on the merits– is to attack in order to defend itself, thereby attempting to block the progress of the infringement action.

Although this procedural strategy is legally legitimate, it cannot serve as an expedient to suspend the infringement action, thereby exposing the IP owner to the harmful effects of time to the point of making it difficult—or even impossible—to repair the damages suffered.

Not uncommon, however, infringement actions are automatically stayed merely due to the existence of a nullity action, sometimes even exceeding the statutory one-year maximum suspension period. As a result, an infringement action may remain stayed for many years until the nullity action is decided, even in the absence of any Federal Court decision suspending the effects of the IP asset or declaring its invalidity.

Within the STJ, there are divergent understandings regarding the necessity (or lack thereof) of suspending infringement actions pending before State Courts due to the existence of nullity actions pending before Federal Courts, which evidences a concerning divergent case law.

For example, the Third Chamber has recognized the need for: (a) the prosecution of the infringement action—after the statutory one-year period—due to the dismissal of the appeal in the nullity action (whose judgment upheld the patent’s validity);[16] (b) the suspension of the infringement action even without any Federal Court decision invalidating the IP asset;[17] (c) the suspension of the infringement action beyond the statutory one-year period, despite the INPI’s position in favor of the validity of the administrative act;[18] (d) the suspension of the infringement action even though both the trial court and the appellate cour recognized the patent’s validity in the nullity action;[19] and (e) the suspension of the infringement action based on the INPI’s opinion to invalidate the patent granted .[20]

The Fourth Chamber, conversely, has: (a) denied a request to suspend the infringement action due to the denial of preliminary relief sought in the nullity action (thus maintaining the effects of the IP asset);[21] (b) upheld the suspension of the infringement action (already judged on appeal level) after the statutory period had elapsed, solely due to the mere filing of the nullity action;[22] and (c) suspended the infringement action (also decided at the appellate level) due to the filing of a nullity action five years later, even without any decision on the invalidity of the IP asset.[23]

On the subject, it is also worth mentioning a ruling by the Second Section of the STJ, which allowed the infringement action to proceed in order to determine whether “the object of the dispute is, indeed, encompassed by the patented technology or at least encroaches upon the intelectual property rights of the claimant, which are, conversely, the subject matter of the nullity action before the Federal Court.”[24]

As can be seen, in some cases decided by the STJ, infringement actions proceeded uninterrupted on the grounds that there was no Federal Court decision suspending the effects of the IP asset or declaring its invalidity. In other cases, however, infringement actions were stayed even when both the trial and appellate Federal Court decisions confirmed the patent’s validity. In some instances, the stay was based solely on the INPI’s opinion in the nullity action. Conversely, there have been cases in which infringement actions were allowed to proceed for the production of expert evidence regardless, of the status of the nullity action.

Given this concerning inconsistent case law, it is clear that the matter should be submitted for adjudication under the repetitive appeals system, with the establishment of objective criteria capable of ensuring harmony and legal certainty (art. 926, CPC).

In our view, an infringement action should not remain frozen before the State Court while indefinitely awaiting the res judicata of a nullity action involving the same IP asset before the Federal Court, except where there is a judicial ruling by the competent court regarding the nullity itself or, at the very least, where preliminary relief has been granted suspending the effects of the IP asset. In such cases, the one-year maximum suspension period may be relaxed in the name of legal certainty.

Not even a possible opinion by the INPI in favor of nullity of the IP asset and/or a potential expert report opining in favor of nullity in the Federal Court would be sufficient grounds to suspend the infringement action. First, because the judge is not bound by the expert opinion (art. 479, CPC), and second, because once the matter is brought before the courts, It is the court’s role to review the validity of the administrative act issued by the INPI pursuant to the applicable legal framework.

In any event, even if one were to accept that the infringement action may be stayed—up to the one-year maximum period—without any Federal Court decision suspending the effects of the IP asset or declaring its invalidity (a position with which we disagree), it is at least necessary to make it clear that the State Court judge must assess any request for provisional relief aimed at ceasing the infringement of the IP asset. After all, even during the suspension of proceedings, the judge retains the authority to “order urgent measures in order to prevent irreparable harm” (art. 314, CPC).

In sum, this issue carries significant infra-constitutional relevance, which requires standardization by the STJ, considering the specificities of the field of IP.

Authors

Marcelo Mazzola – Postdoctoral researcher, PhD and Master in Civil Procedure (UERJ). Professor at the School of Magistracy of the State of Rio de Janeiro. Attorney-at-law.

Nathalia Ribeiro – Master in Civil Procedure (UERJ). Professor at the School of Magistracy of the State of Rio de Janeiro. Attorney-at-law.

Footnotes

[1] This symbiosis between the two fields is well illustrated in DIDIER JR., Fredie; MAZZOLA, Marcelo; OSNA, Gustavo. Civil Procedure and Industrial Property. 3rd ed. São Paulo: JusPodivm, 2025.

[2] “Issues concerning trade dress (overall commercial image), unfair competition, and other related claims—since they do not involve registration before the INPI and concern judicial disputes between private parties—clearly fall within the jurisdiction of the State Courts, as they do not affect the institutional interests of the federal agency. However, the Federal Courts have jurisdiction, in actions seeking the nullity of a trademark registration, with the participation of the INPI, to order the trademark holder to refrain from use, including with respect to provisional relief.”

Special Appeal (REsp) No. 1,527,232/SP, Rapporteur Justice Luis Felipe Salomão, Second Section, published on Feb. 5, 2018.

[3] “The initial term and duration provided for in the sole paragraph of article 40 of the Industrial Property Law (LPI) are not applicable to patents filed under the rules set forth in article 229, sole paragraph, of the same statute (so-called mailbox patents).”

Special Appeal (REsp) No. 1,869,959/RJ, Rapporteur Justice Nancy Andrighi, Second Section, published on May 11, 2022.

[4] “The limitations on intellectual property rights set forth in article 10 of Law No. 9,456/97—applicable exclusively to holders of Plant Variety Protection Certificates—are not enforceable against holders of product and/or process patents related to transgenic technology when such technology is present in the reproductive material of plant varieties.”

Special Appeal (REsp) No. 1,610,728/RS, Rapporteur Justice Nancy Andrighi, Second Section, published on Oct. 14, 2019.

[5] “In actions involving patents and industrial designs, nullity may be raised as a defense in infringement actions before the State Courts, producing inter partes effects, pursuant to article 56, §1, of the Industrial Property Law.”

Divergence Embargos in Special Appeal (EREsp) No. 1,332,417/RS, Rapporteur Justice Nancy Andrighi, Second Section, published on June 18, 2024.

See also: “The Industrial Property Law, in article 230, §4, in conjunction with article 40, establishes that the protection granted to foreign patents—so-called pipeline patents—shall remain in force ‘for the remaining term of protection in the country where the first application was filed,’ up to the maximum term of protection granted in Brazil (20 years), counted from the date of the first foreign filing, even if subsequently abandoned.”

Special Appeal (REsp) No. 731,101/RJ, Rapporteur Justice João Otávio de Noronha, Second Section, published on May 19, 2010.

[6] For example: (i) which jurisdictional rule applies to infringement actions seeking damages—article 46 of the CPC or article 53, IV, “a”, of the CPC?; (ii) what is the appropriate procedural moment to assert the right of priority in trademark matters (articles 129, §1, and 158 of the LPI): may it be raised judicially after the registration is granted, or must it necessarily be asserted prior to registration?; (iii) what is the procedural status of the INPI in nullity actions (dynamic co-litigant, amicus curiae, or assistant)?; and (iv) does compensation for material damages in infringement actions arise from the mere occurrence of infringement, or does it depend on proof of actual damages?

[7] On the procedural position of the INPI in nullity actions, see ANDRIGHI, Nancy; GRANDO, Rodrigo. The Mandatory Intervention of the INPI under the Industrial Property Law from the Perspective of the Superior Court of Justice. In: DIDIER JR., Fredie; MAZZOLA, Marcelo; OSNA, Gustavo (eds.). Civil Procedure and Industrial Property. 3rd ed. São Paulo: JusPodivm, 2025, pp. 227–244.

See also: MAZZOLA, Marcelo; RIBEIRO, Nathalia. Re-signification of the INPI’s Procedural Position in Nullity Actions: A Dynamic Co-Litigant – The Need for the Issue to Be Taken Up by the STJ. ABPI Review, Mar./Apr. 2018, No. 153, p. 31 et seq.

[8] In the case of patents and industrial designs, the Industrial Property Law authorizes the interested party to raise nullity of the IP asset as a defense in infringement actions (article 56, §1). In such cases, the State Courts may examine the nullity of the asset, albeit with effects limited to the parties. See the aforementioned EREsp No. 1,332,417/RS.

[9] This phenomenon occurs when a relationship of subordination (or dependence) between actions (or between the issues debated therein) is evidenced. As doctrine explains, a “prejudicial issue is a disputed matter upon which the resolution of the merits depends and which may itself constitute the object of an autonomous action.”

CAMBI, Eduardo; DOTTI, Rogéria; PINHEIRO, Paulo Eduardo d’Arce; MARTINS, Sandro Gilbert; KOZIKOSKI, Sandro Marcelo. Course on Civil Procedure. São Paulo: Revista dos Tribunais, 2017, p. 256.

[10] As highlighted by LUIZ FUX, in situations of external preclusive effect, where joinder of proceedings is not possible, it is appropriate for “the judge presiding over the affected case to stay the adjudication of the merits until the decision on the prejudicial issue is rendered, so that it may then be used as grounds for deciding the case it influences (article 313, V, a, CPC). This explains why the existence of an external prejudicial issue constitutes a cause for suspension of proceedings.”

FUX, Luiz. Course on Civil Procedural Law. 5th ed. Rio de Janeiro: Forense, 2022, pp. 340–341.

[11] The suspension of proceedings due to external preclusive effect aims to minimize the risk of conflicting decisions, especially when the disputes are pending before courts of different jurisdictions.

[12] Interlocutory Appeal in Special Appeal (AgInt no AREsp) No. 1,709,685/RJ, Rapporteur Justice Raul Araújo, Fourth Chamber, published on Apr. 23, 2021.

See also AgInt no REsp No. 1,894,500/SP, Rapporteur Justice Marco Aurélio Bellizze, Third Chamber, published on June 10, 2021.

[13] SALOMÃO, Luis Felipe; TAUK, Caroline. Nullity of Trademarks and Patents: Jurisdiction for Incidental and Principal Declarations. In: DIDIER JR., Fredie; MAZZOLA, Marcelo; OSNA, Gustavo (eds.). Civil Procedure and Industrial Property. 3rd ed. São Paulo: JusPodivm, 2025, p. 206.

[14] MEIRELLES, Hely Lopes. Brazilian Administrative Law. 27th ed. São Paulo: Revista dos Tribunais, 2002, p. 154.

[15] According to LUIZ FUX, “the suspension provided for in article 313, V, a, of the CPC presupposes that the prejudicial issue is external and raised in a case filed prior to the action whose proceedings are stayed.”

FUX, Luiz. Course on Civil Procedural Law. 5th ed. Rio de Janeiro: Forense, 2022, pp. 340–341.

Conversely, Leonardo Carneiro da Cunha understands that suspension may occur even if the case containing the prejudicial issue was filed after the action that may be affected.

CUNHA, Leonardo Carneiro da. Code of Civil Procedure Commented. Article by Article. Rio de Janeiro: Forense, 2023, p. 537.

[16] AgInt no REsp No. 1,685,343/RS, Rapporteur Justice Ricardo Villas Bôas Cueva, Third Chamber, published on Mar. 1, 2024.

[17] Special Appeal (REsp) No. 1,940,037/SP, Rapporteur Justice Nancy Andrighi, Reporting Justice for the decision Justice Marco Aurélio Bellizze, Third Chamber, published on June 22, 2023.

[18] AgInt no REsp No. 2,164,273/RJ, Rapporteur Justice Nancy Andrighi, Third Chamber, published on Sept. 25, 2025.

[19] Special Appeal (REsp) No. 1,558,149/SP, Rapporteur Justice Marco Aurélio Bellizze, Third Chamber, published on Dec. 3, 2019.

[20] AgRg nos EDcl no Ag No. 1,228,681/RS, Rapporteur Justice Massami Uyeda, Third Chamber, published on June 29, 2011.

[21] AgInt nos EDcl no AREsp No. 1,374,195/DF, Rapporteur Justice Marco Buzzi, Fourth Chamber, published on May 25, 2020.

[22] AgRg no REsp No. 742,428/DF, Rapporteur Justice Honildo Amaral de Mello Castro (Justice sitting by designation from the Court of Justice of Amapá), Fourth Chamber, published on Feb. 2, 2010.

[23] Special Appeal (REsp) No. 742,428/DF, Rapporteur Justice Massami Uyeda, Fourth Chamber, published on Dec. 4, 2006.

[24] AgInt no AgInt no Conflict of Jurisdiction (CC) No. 198,259/SP, Rapporteur Justice João Otávio de Noronha, Second Section, published on Sept. 30, 2024.