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Facade of the TJRS building. Credit: Juliano Verardi – DICOM/TJRS

The Court of Justice of Rio Grande do Sul (TJRS), when analyzing a case involving a possible infringement of an industrial patent, overturned the first instance ruling and ordered that a new technical examination be carried out by a professional with knowledge of the Industrial Property Law.

 

The 6th Civil Chamber of the Court of Justice of the State of Rio Grande do Sul decided, unanimously, to follow the vote of the rapporteur, judge Niwton Carpes da Silva, and grant the appeal.

 

In the report, Carpes da Silva says that the expert report carried out is not null, but rather ineffective in “laying bare and revealing the objective it proposed”. The judge voted to redo the examination “in order to bring more reliable and pertinent elements of conviction”.

 

 

The case began when Rovler Indústria de Agroequipamentos filed a claim for compensation for losses and damages against Metalúrgica Vera Cruz and M&L Máquinas. Rovler stated that the two companies were manufacturing and marketing a cereal dryer developed and patented by it in 2006, according to patent letter PI 0604168-0.

 

In the first instance, the sentence dismissed the action based on an expert report that attested that there had been no infringement of the plaintiff company's copyright. When appealing the decision, the manufacturer defended the nullity of the report, arguing that it had been prepared by a professional who was not a specialist in the field of patents.

 

The judge-rapporteur did not accept the request to nullify the report, but understood that it was necessary to overturn the sentence and carry out a new examination. “Combing the files, I verify that the report, although it was prepared by an engineer with a specialty in industrial mechanics, this professional stated that he was unaware of the Industrial Property Law”, wrote Carpes da Silva.

 

In the report, the judge points out that to analyze the occurrence of patent infringement, it is necessary to compare the products of the defendant companies and the claims corresponding to the patented product. According to him, it is not enough to carry out “a mere comparison/comparison between the machinery”, as the expert appointed at the origin did.

 

“Certainly because he was unaware of Law 9,279/96, the expert said nothing about the content of the claims contained in the title granted by the INPI, which determine the protected object and the extent of the protection granted to the right holder. This comparison seemed indispensable in light of specific legislation for the purpose of concluding on the infringement of the invention and infringement of the patent”, stated the rapporteur.

 

Therefore, he voted to grant the appeal, revoke the sentence, reopen the evidentiary investigation and carry out a new technical examination, now with an expert knowledgeable about the Industrial Property Law.

 

“It is an important paradigm to establish and guide jurisprudence in this sense. It is important that judges understand that actions involving the Industrial Property Law are complex and that the expertise cannot be carried out by professionals who do not know the subject”, said Fabiano de Bem da Rocha, from the firm Leão Direito Intelectual, Rovler's lawyer.

 

The process is being processed under number 5000160-53.2014.8.21.0077