The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.
Silver - Individuals: litigation
Clients are always pleased with the impeccable patent service that Montaury Pimenta provides: “They are very committed to their work and invariably give clear advice on patent prosecution.” The firm stands out in the IP field for its “well-organised, responsive and reliable” team comprising experts Luiz Edgard Montaury Pimenta, Ana Paula Affonso Brito, Eduardo Magalhães Machado, Roberto Vieira de Mello and Gabriela Salerno. Luiz is well equipped to handle complex IP disputes with ease, given his strong reputation as a talented litigator in Brazil. Ana Paula has an intricate knowledge of procedures at the state and federal levels, which grants her the ability to defend patrons' IP rights. Eduardo is an all-round IP expert. As he has been practicing since 1980, his talents have earned him seats on international associations and a stellar global reputation. Roberto has over 30 years of experience providing the full range of IP services. The depth of his regional knowledge allows him to file not only in Latin America but across the entire world. Gabriela assists clients in honing their innovations; she focuses on registering new inventions within the pharmaceutical field. She brings 16 years of technical experience to her role as head of the technical team.
Ana Paula Brito is an experienced trial lawyer and litigator who has worked in IP since 2001. A partner at Montaury Pimenta, Machado & Vieira de Mello since 2011, Ms Affonso Brito has extensive experience in handling complex IP litigation matters before the Brazilian federal and state courts for domestic and international clients. She focuses her practice on IP litigation, with an emphasis on patents, trademarks, copyright, domain names, designs and unfair competition law, assisting clients in different fields of activity and technology, such as pharmaceuticals, telecom, house appliances, crop science, cosmetics, fashion, food, mechanical, oil and gas, machinery and software. She is a member of the 5G Special Commission, Technical Standards and Technological Innovation (CEPTIT) of the Rio de Janeiro Bar Association (OAB/RJ).
Ms Affonso Brito’s practice includes:
- evaluating potential litigation risks;
- collaborating with corporate departments to review and advise on litigation strategies;
- developing solutions and litigation strategies;
- handling and monitoring a variety of complex litigation matters; and
- representing plaintiffs and defendants in IP litigation across the country.
Ms Brito holds a master’s in intellectual property and innovation from the Brazilian Patent and Trademark Office Academy (2010), a postgraduate degree in IP from the Rio de Janeiro State University School of Law (2006), a postgraduate degree in e-law (digital law) from the Getúlio Vargas Foundation (2002) and a law degree from the Rio de Janeiro State University School of Law (2000).
She is the author of numerous articles, including the following.
- 'Major changes in the Brazilian IP system in the year 2022', Lexology, January 2023.
- 'Patents in Brazil: has the minimum validity term become a “dead end?', Chapter Opening - Patent Litigation of Brazil’s Best Counsel 2022", Leaders League.
- 'Patent infringement and invalidity actions in Brazil', The Patent Lawyer Annual 2022, December 2021.
- 'Brazil: a discussion more current than ever on patent validity terms', Patent Lawyer Annual 2021, December 2020.
- 'Trade Dress Protection in Brazil – A Glimpse at the Beverage Market', AIPPI News, October 2019.
A specialist in complex IP litigation, IP prosecution and enforcement, Montaury Pimenta, Machado & Vieira de Mello is one of Brazil’s top IP law firms, working across national and international markets. It offers technical expertise in the areas of electrical engineering, electronics, mechanical engineering, physics, life sciences and healthcare, biotechnology, chemicals and pharmaceuticals, software and computer sciences, telecommunications and nanotechnology, with a strong patent litigation practice.
The firm’s services include strategic consulting, legal analysis, searches, filings, filing of oppositions, administrative and legal disputes, as well as franchising agreements and technology transfer. The firm also helps in the process of negotiating agreements and taking actions before national and international arbitration chambers. In addition, the firm has also experienced remarkable growth, confirming its outstanding position in the market, especially regarding strategic and complex patent litigation, patent matters (including patent filing and prosecution), and freedom-to-operate and infringement opinions.
Montaury’s reputation for resolving disputes before the Brazilian IP courts is one of the firm’s distinguishing features. The litigation practice is very active and combative, always focused on efficiency and obtaining results. The firm handles complex domestic and international patent litigation and counselling, with a high rate of successful decisions in federal and state courts.
The firm’s ability to meet its clients’ needs and commitment to the issues brought to it, together with the high success rate in the cases handled, are undoubtedly the firm’s core strengths. The firm has an integrated structure of correspondents throughout Brazil and abroad, providing local support and consequent agility and security to clients that demand services in other regions or countries. Its professionals are members of several national and international IP associations. This engagement ensures that the firm’s professionals are always up to date with the practices adopted not only in Brazil but also abroad and in relation to current jurisprudence on the main issues of intellectual property in Brazil and in the world. This contributes to delivering effective services to clients.
Furthermore, the firm’s life sciences practice has been steadily growing over the past few years. Apart from patent filings, prosecution and litigation work, the team also provides prior art searches and freedom-to-operate reports. The life sciences department also offers consulting services in relation to the protection of plant varieties encompassing all phases of the process, from the request of protection for plant varieties with the Ministry of Agriculture, to the issuance of the plant variety protection certificate, as well as the maintenance of such protection. The head of the life sciences department, Gabriela Salerno, is the current chair of the Patent Committee of the Brazilian Intellectual Property Association.
The firm’s highly trained technical experts provide first-class representation through all stages of the patent process, from the preliminary administrative level to the courtroom. Roberto Vieira de Mello, one of the firm’s founder partners, leads the patent team, which is made up of a large group of engineers, lawyers and pharmacists.
The firm’s reputation was built on its expertise, availability and proactiveness in defending clients’ IP rights in the following areas of practice:
- utility models;
- industrial designs;
- freedom-to-operate opinions;
- plant varieties;
- patent litigation;
- IP litigation;
- trademark management;
- geographical indications;
- copyright and software;
- anti-piracy programmes;
- domain name disputes;
- digital law;
- fashion law;
- trade dress;
- unfair competition;
- advertising law; and
- life sciences.
The patent services include:
- prior art searches;
- patent analysis;
- patent applications;
- patent prosecution;
- freedom-to-operate opinions;
- industrial designs;
- utility models;
- complex patent litigation, including patent invalidity proceedings and infringement lawsuits;
- payment of annuities;
- patent transactions;
- patent licensing; and
- know-how licensing.