Brazil

The last two years have been tumultuous for Brazil, with major political and economic turmoil culminating in the impeachment of the president. Although uncertainty remains, it is hoped that the worst has now passed. In a positive development, the newly appointed president of the Brazil Patent and Trademark Office (BRPTO) has been looking to address the overwhelming backlog of cases. While promises to tackle the problem have previously gone unfulfilled, new guidelines have already been issued and 70 patent examiners were hired in 2016. Further, the much-awaited Patent Prosecution Highway agreement between Brazil and the United States came into force early last year, which should continue to speed up processes. Although some commentators doubt whether the backlog can be cleared without government intervention, these changes are nevertheless a step in the right direction. Therefore, there is cause for cautious optimism about the Brazilian patent market’s long-term prospects.

Firms

1
Dannemann Siemsen
Gusmão & Labrunie
2
Barbosa Müssnich Aragão
DANIEL Legal & IP Strategy
Licks Attorneys
Soerensen Garcia Advogados Associados
Veirano Advogados
3
David do Nascimento Advogados Associados
Di Blasi, Parente & Associados
Gaiarsa, Ferreira & Meyer Propriedade Intelectual
Guerra IP
Luiz Leonardos & Advogados
Müller Mazzonetto
Pinheiro Neto Advogados
Zancaner Costa Bastos e Spiewak Advogados
Barbosa Müssnich Aragão
“An important player on the IP scene”, Barbosa Müssnich Aragão “is great in quality and price”. While famed for its trademark offering, the “go-to firm” is also well equipped with discerning engineers and scientists who make light work of sophisticated patent instructions. It “performs consistently well” across the contentious/non-contentious divide, although it shines brightest when intricate deals are involved: “It has immense corporate resources and a large number of professionals, so it is among the best out there for handling IP transactions.” Deal negotiations fall squarely within the remit of “standout transactional lawyer” Antonella Carminatti, as do tricky patent disputes; she also directs the French desk. The business-savvy Ana Cristina Müller is another deft negotiator and a gifted prosecutor with chemical and biotechnology innovations on lock. Bhering Advogados has a formidable domestic presence, with posts in Rio de Janeiro, São Paulo and Curitiba. Thanks to a stellar in-house translation department and a crew of internationally minded practitioners, the discerning set garners the most praise for its incisive counselling of global heavyweights, including BASF and LG, for which it has handled over 420 and 295 patent cases respectively. In addition, it runs a highly efficient German desk and has recently opened a French desk, making it a compelling choice for European patent owners. The former falls under the care of Philippe Bhering, who has a refined appreciation of German and European procedures and laws. He also heads the litigation division – “an extremely reliable and trustworthy group” whose “communications are timely and language skills excellent”. Bhering and his team’s “substantive knowledge of Brazilian IP law and client service are both exemplary”.
DANIEL Legal & IP Strategy
Following a brand makeover in 2016, Daniel Legal & IP Strategy has emerged stronger than ever. The patent department has been reinvigorated with a series of new appointments, including the perceptive André Venturini, who has extensive contentious experience and an intimate familiarity with the inner workings of the BRPTO. He now heads the “huge patent practice”, which is home to 14 engineers, supervising “a committed, reliable and efficient team that provides high-quality services”. “Extremely responsive and engaged, its practitioners are brilliant in prosecution. They report actions quickly and are creative at suggesting avenues for expediting important matters.” Meanwhile, a squad of over 24 litigators does an outstanding job of keeping infringers at bay. The “really knowledgeable” Rana Gosain has accumulated infinite wisdom on both sides of the practice over the years, making his portfolio management skills absolute. “Extremely capable in patent work”, he is “internationally renowned for his longstanding experience and excellence as both a professional and team leader”.
Dannemann Siemsen
Housing the oldest and largest IP practice in the country, the “deservedly gold-tier” Dannemann Siemsen sits at the apex of the Brazilian patent market. It is “strong in all fields, from filing to prosecution to litigation”, and “always focuses on quality and modernity”. Armed with a crew of technically gifted patent agents, no field is too obscure and no quandary too difficult for this esteemed ensemble. It “gives fast responses and precise advice regarding complex office actions all over the world”, and “its professionals are really skilled – not just in terms of scientific knowledge, but also in technical IP abilities”. The firm frequently makes waves in litigation, with Joaquim Eugenio Goulart leading the charge. He is lauded for his comprehensive winning strategies and has been labelled “one of the finest patent litigators in Brazil”. Cláudio França Loureiro shores up the contentious efforts with his polished arguments, which always resonate with judges. Luiz Henrique do Amaral is another stalwart defender of rights, although the smooth talker is best known for his ability to get signatures on the bottom line of multifaceted deals. Similarly, Cândida Ribeiro Caffé is “a top transactional lawyer” with an affinity for the fine print of critical IP transfer agreements. The “highly responsive” Gustavo de Freitas Morais has “a superb understanding of pharmaceutical patent issues” and “robust, up-to-date knowledge of IP matters”. The “very competent and responsible” Ana Claudia Mamede Carneiro is another life sciences whizz who “renders top-quality service in a timely fashion”. The “gifted practitioner” has “a unique understanding of complex technological processes and can translate that information in a way that clients appreciate”. Non-contentious experts Ivan Ahlert and Frank Fischer complete the group. Alhert is “extremely smart” and “deeply familiar with patent prosecution”. The “highly motivated and deeply engaged” Fischer “analyses legal issues carefully and applies practical judgement before reaching any conclusions”; he is “really clever and is able to grasp the crux of an invention immediately”.
David do Nascimento Advogados Associados
Inventors and innovators are never left waiting at David do Nascimento, thanks to its lightning-fast turnaround times and flawless communication. Answers to convoluted problems are provided quickly and concisely by professionals who are “capable in complex prosecution and litigation, for both trademarks and patents”. “It is efficient and effective with reasonable prices, making it one of the most important firms in Brazil for patent issues.” Its “experienced” and “robust patent department” serves a diverse clientele, although its “sound technical knowledge” is most apparent in the areas of electronics, chemicals and telecommunications. The trilingual Marcello do Nascimento oversees the set with verve. Taking a big-picture view of clients’ goals, he crafts practical, decisive strategies for the tactical expansion of patent portfolios.
Di Blasi, Parente & Associados
Di Blasi, Parente & Associados houses a “top practice” distinguished by almost three decades at the IP coalface. The well-organised ensemble is technically astute across the gamut of industries, although life sciences, mechanics and information technology are fortes. Its “very responsive” assembly of lawyers, scientists and engineers are also “experts with regard to oil and gas and software-related inventions”. Effortlessly dispatching complicated multi-jurisdictional instructions, the firm has handled cross-border litigation for myriad world-renowned names, including Samsung. This was masterminded by managing partner Gabriel Di Blasi, who is as proficient at prosecution as he is at litigation. A familiar figure in high-stakes courtroom battles, he recently assisted Merck in settling a hotly contested disagreement when it had a nullity action filed against it.
Gaiarsa, Ferreira & Meyer Propriedade Intelectual
The small but mighty Gaiarsa, Ferreira & Meyer is “a formidable firm” that punches well above its weight in contentious spats. It possesses an all-encompassing awareness of the IP market and provides piercing insight that guides clients safely through the patent landscape. The set is a particularly valuable ally when it comes to pharmaceutical and chemical inventions. Its “incredible practitioners” make “an excellent support team, which conducts comprehensive analysis of legal strategies”. Lucas Martins Gaiarsa and Katia Jane Ferreira Evangelista can take the credit for this. Gaiarsa “has in-depth knowledge of the patent system and strong experience in many technical fields”, while Ferreira is “outstanding in cosmetics and biotechnology”.
Guerra IP
Nimble and cost effective, Guerra IP is a lean, mean patent machine, equally accomplished at drawing up watertight applications as at enforcing vital IP rights. Headquartered in Porto Alegre, the firm is a dominant force in southern Brazil. It is unique for its organisational efficiency, which affords constant, unimpeded access to partner-level advice. Its sharp practitioners have their fingers on the pulse of all the latest legal developments thanks to their close involvement in influential committees and associations. As a prime example, the esteemed Ricardo Pinho currently serves as president of the Brazilian Association of Industrial Property Agents. He is a versatile and “knowledgeable IP practitioner” who consistently delivers in litigation and transactions. By the same token, Alberto Guerra is a contentious sharpshooter who has racked up many years of experience – and victories – in the courtroom. He is also a skilled draftsman and spearheads the patent prosecution division with aplomb.
Gusmão & Labrunie
“A highly professional firm with qualified IP staff who offer proactive solutions to complex problems”, is the verdict on Gusmão & Labrunie. “One of the top IP outfits in the market”, its lateral thinking and creativity make its patent practice “extremely strong”. In particular, it is a superlative force in the courtroom. As one peer notes: “Whenever I come up against its lawyers in court, I feel they are doing a superb job – the quality of their work is top notch.” Its legal and technical specialists are equally revered by clients: “They are very competent and reliable, as requests are promptly attended to and deadlines are met. What’s more, their rates are flexible and always open to discussion.” Ana Paula Santos Celidonio is team captain; she is a shrewd operator who devises bulletproof tactics for achieving long-term goals. Jacques Labrunie provides added firepower in heated disputes. “A recognised name and frequent speaker on the IP scene”, he mixes “academic knowledge with practical, cutting-edge know-how.” Similarly, José Roberto Gusmão is “a consummate professional. A former president of the BRPTO and a well-known professor, he possesses a wealth of experience”. “Well placed at the top of the rankings” and “one of the biggest players”, Kasznar Leonardos earns immense respect from lawyers and clients alike around the world. “It is unbelievably easy to communicate with its patent team. Responses are fast and comprehensible and its advice is provided with a clear vision that considers all opportunities. As such, you receive the best possible advice.” Though steeped in a rich history, the firm moves with the times; state-of-the-art IT systems, fine-tuned international relationships and diverse technical know-how all make for a sophisticated, modern service. The “friendly and trustworthy” João Luis D’Orey Facco Vianna fronts the group. A life sciences maven, “he is always a pleasure to deal with and undertakes prosecution work in a timely manner and to a high quality”. Likewise, the “reliable and competent” Tatiana Almeida Silveira performs adroitly on chemistry-related briefs: “She knows this field better than anybody else.” “She has a thorough understanding of both technical and legal issues and is also a fine person.” Gabriel Francisco Leonardos is “very smart and a real professional”. The contentious aficionado is “technically knowledgeable and efficient at managing IP transactions”. Claudio Roberto Barbosa divides his time in a similar fashion, having honed his litigation and transactional skills to a fine point. The “superb” Elisabeth Kasznar Fekete rounds off the set: “One of the best for IP transactions, she brings so much to the table, especially for intricate and complex matters.” “She has great academic credentials, wide-ranging experience and is an active member of the IP community, having done a terrific job during her time as president of the Brazilian Intellectual Property Association.”
Licks Attorneys
“Licks Attorneys does mostly patent litigation – and it does it awfully well.” It has established “a solid reputation” for its staunch defence of global industry leaders and their IP rights, and “deserves to be recommended based on its significant courtroom performances alone”. Along with an Asian desk in Japan, it has a sizeable team of internationally trained lawyers based in Brazil that makes light work of any cross-border infringement conundrum. The more demanding the matter, the more its lawyers can demonstrate their contentious talents. Pharmaceuticals and telecommunications are strong suits both for the firm and for founding partner Otto Licks. He “is an appropriately aggressive and active litigator” who is “well trained and able to handle difficult cases with much success”. He is also “known for his perseverance” and “excellent writing” skills. In the last year, Licks and his team have been indispensable in asserting Ericsson’s rights in Brazil, handling all facets of a high-stakes international infringement campaign. A pillar of support in this case and many others, Carlos Aboim is “a brilliant lawyer” who has almost 20 years of trial experience to his name.
Luiz Leonardos & Advogados
Having clocked up over 90 years on the legal landscape, Luiz Leonardos has “a significant international presence” and an “excellent list of clients”. All its partners hold first-rate legal and technical qualifications and are backed by a solid cohort of over 60 IP-focused professionals. Transparency, efficiency and value for money are the core principles that drive the squad, which results in impeccable client service. Managing partner Gustavo Leonardos keeps a close eye on all matters; he excels in both patent disputes and multifaceted negotiations. A statesman of the IP scene, Luiz Leonardos dispenses sage guidance on sophisticated patent and trademark matters. With a background in electrical engineering, Ana Paula Jardim takes charge of patent prosecution. She is a safe pair of hands for local inventors and multinationals alike. Chemistry doyenne Renata Campello Afonso completes the troop. “She is skilled and has a high success rate for getting patents granted. Her recommendations are helpful, she prepares draft responses well before the deadline and it is enjoyable working with her.” The 2010 fusion of two venerable IP firms resulted in the formation of Montaury Pimenta, Machado & Vieira de Mello. Since then “it has grown considerably”; having “further increased its size by consolidating its practice with the resources of other patent firms and practitioners”, it is “definitely a player worth keeping a close eye on”. Magnus Aspeby is one individual who recently joined the set. A chemical engineer by training, he is a star of the prosecution division and draws on “a great deal of patenting experience”. Iko Medina’s non-contentious track record is also widely acclaimed. “He is a renowned individual on the market and the quality of his prosecution work is very high.” Name partners Luiz Edgard Montaury Pimenta and Eduardo Magalhães Machado both come “highly recommended”. Montaury Pimenta commands the formidable contentious division with poise; Machado runs the licensing department and assists clients in extracting top-dollar value from a range of technologies. The partners and the rest of the team are “motivated and really knowledgeable professionals”.
Müller Mazzonetto
The patent department of Müller Mazzonetto has enjoyed substantial growth in the last few years. The boutique has impressive dispute resolution and transactional capabilities – although its prosecution practice has also evolved significantly – and also features a dedicated pharmaceuticals division. “Its team provides very clear and objective guidance and is incredibly efficient. Its straightforward, accurate advice comes at a good price and, importantly, its members appreciate the needs and mindset of the client.” Founding partners Nathalia Mazzonetto and Karina Haidar Müller have overseen myriad litigations and key IP transfer agreements. “Both are outstanding lawyers due to their expertise, availability and quality of work. Their analysis is easy to understand and they really focus on what is best for the client.” Alexandre Fukuda Yamashita provides invaluable technical support in all patent and design cases and validity and infringement proceedings. With dual qualifications in law and mechanical engineering, he can also step up to the plate on must-win suits when necessary.
Pinheiro Neto Advogados
Full-service outfit Pinheiro Neto Advogados has enjoyed spectacular growth in the last five years, having doubled in both size and revenue; its robust patent practice has likewise thrived. “Its professional service is excellent and very transparent. It is reliable for translations and provides highly practical advice.” The team prides itself on its extensive international experience and consistently high calibre of work. These traits have helped it to pull in an impressive roster of clients, and today it drafts intricate patent applications for the likes of Intel, Gulfstream and LG Chem. Although prosecution is the focus, the firm also performs adroitly in hard-fought disputes when necessary. José Mauro Machado is the primary point of contact here.
Soerensen Garcia Advogados Associados
The “fast-growing” Soerensen Garcia is more than just a filing shop: it understands the business value and utility of intellectual property and has a laser focus on developing and harnessing innovation. “A go-to firm in Brazil, it is effective, commercially focused, responsive and reasonably priced. Not to be underestimated, its back office also works seamlessly, unlike other firms that may suffer from administrative inefficiencies.” The set has diverse capabilities across the IP spectrum and its patent department has attracted a number of big-name clients, from local universities to global patent owners such as Caterpillar and Nestlé. These are tended to by team captain Barbara Cattete Dias, a biomedical engineering dynamo with a dazzling record in BRPTO appeals. A staple of the IP scene, Mario Augusto Soerensen Garcia has a penchant for moulding conceptual ideas to match the realities of business. He is a font of life sciences and chemistry wisdom, although his attention has recently been centred on the digital and electronics spheres.
Veirano Advogados
One of the only full-service firms to employ its own in-house engineers and pharmacists, Veirano is a top pick for IP concerns, especially those involving sophisticated transactional elements. Its synergistic corporate departments make inking technology transfer and licensing agreements a cinch, while its technically proficient professionals are also adept at both filings and litigation. Keeping a hawkish eye on the IP group is Valdir Rocha, a distinguished figure on the Brazilian IP market. Resourceful and immensely experienced, Rocha is a canny dealmaker who is equally at home drafting and defending applications.
Zancaner Costa Bastos e Spiewak Advogados
Zancaner Costa Bastos e Spiewak Advogados offers a polished service for all patent-related matters, but its metier is the judicious management and development of portfolios. It helps innovators to develop key policies and overarching strategies that save time, money and effort, and is notably proficient in highly regulated industries such as the life sciences. The firm has recently been advising the likes of Sanofi and Teva on high-level patent policy and portfolio management. The “first-rate” Benny Spiewak directed these endeavours; he was also recently commissioned by the UK Intellectual Property Office to complete the first Brazilian IP guide for UK practitioners. “Spiewak is proactive, results oriented and responsible. As an IP enthusiast, he is always ready to put in all his energy and time to get the job done.”

Luminaries

Luiz Leonardos - Luiz Leonardos & Advogados

Individuals: transactions

Luiz Henrique O do Amaral - Dannemann Siemsen
Claudio Roberto Barbosa - Kasznar Leonardos
Cândida Ribeiro Caffé - Dannemann Siemsen
Tatiana Campello - Demarest Advogados
Antonella Carminatti - Barbosa Müssnich Aragão
Andreia Gomes - TozziniFreire Advogados
Elisabeth Kasznar Fekete - Kasznar Leonardos
Jacques Labrunie - Gusmão & Labrunie
Gustavo Starling Leonardos - Luiz Leonardos & Advogados
Eduardo Magalhães Machado - Montaury Pimenta, Machado & Vieira de Mello
Nathalia Mazzonetto - Müller Mazzonetto
Karina Haidar Müller - Müller Mazzonetto
Ana Cristina Müller - Barbosa Müssnich Aragão
Ricardo Pinho - Guerra IP
Valdir Rocha - Veirano Advogados
Benny Spiewak - Zancaner Costa Bastos e Spiewak Advogados
Marcela Waksman Ejnisman - TozziniFreire Advogados

Individuals: prosecution

Ivan B Ahlert - Dannemann Siemsen
Antonio MP Arnaud - Pinheiro, Nunes, Arnaud e Scatamburlo Advogados
Magnus Aspeby - Montaury Pimenta, Machado & Vieira de Mello
Renata Campello Afonso - Luiz Leonardos & Advogados
Ana Paula Santos Celidonio - Gusmão & Labrunie
Ana Claudia Mamede Carneiro - Dannemann Siemsen
Leonardo Cordeiro - Gruenbaum, Possinhas & Teixeira
Gabriel Di Blasi - Di Blasi, Parente & Associados
Barbara Cattete Dias - Soerensen Garcia Advogados Associados
Marcello do Nascimento - David do Nascimento Advogados Associados
Katia Jane Ferreira Evangelista - Gaiarsa, Ferreira & Meyer Propriedade Intelectual
Frank Fischer - Dannemann Siemsen
Alexandre Fukuda Yamashita - Müller Mazzonetto
Lucas Martins Gaiarsa - Gaiarsa, Ferreira & Meyer Propriedade Intelectual
Leonor Magalhães Galvão - Magellan IP
Rana Gosain - DANIEL Legal & IP Strategy
Ana Paula Jardim - Luiz Leonardos & Advogados
Iko Medina - Montaury Pimenta, Machado & Vieira de Mello
Ana Cristina Müller - Barbosa Müssnich Aragão
Caio Rodrigues da Silva - Magellan IP
Tatiana Almeida Silveira - Kasznar Leonardos
André Venturini - DANIEL Legal & IP Strategy

Individuals: litigation

Joaquim Eugenio Goulart - Dannemann Siemsen
José Roberto Gusmão - Gusmão & Labrunie
Jacques Labrunie - Gusmão & Labrunie
Otto Licks - Licks Attorneys
Cláudio França Loureiro - Dannemann Siemsen
Carlos Aboim - Licks Attorneys
Luiz Henrique O do Amaral - Dannemann Siemsen
Claudio Roberto Barbosa - Kasznar Leonardos
Philippe Bhering - Bhering Advogados
Gabriel Di Blasi - Di Blasi, Parente & Associados
Alberto Guerra - Guerra IP
Nathalia Mazzonetto - Müller Mazzonetto
Luiz Edgard Montaury Pimenta - Montaury Pimenta, Machado & Vieira de Mello
Gustavo de Freitas Morais - Dannemann Siemsen
Karina Haidar Müller - Müller Mazzonetto
Ricardo Pinho - Guerra IP
Valdir Rocha - Veirano Advogados
Mario Augusto Soerensen Garcia - Soerensen Garcia Advogados Associados
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Issue 84