Marcela Trigo de Souza joined the Firm in 2014 as a partner in the group of Intellectual Property and Information Technology and Communications, acting with focus on litigation and strategic advisory. She is currently Co-Chair of the Global Business Unit of Patent Advisory and Disputes at Baker McKenzie [with whom we hold a strategic cooperation with] and Head of the Life Sciences Industry Group and Healthcare in Brazil. Marcela has extensive experience in legal disputes involving patents, industrial secrecy, protection of confidential data, data package exclusivity (DPE), unfair competition and regulatory compliance, especially in the pharmaceutical, biotechnology and telecommunications areas.
She worked at the Finnegan office in Washington D.C., where she served as an international lawyer in the patent litigation area, focusing on the bio & pharmaceutical industry. She also served as an advisor to Judge Randall Rader at the U.S. Court of Appeals for the Federal Circuit, Washington, D.C.
Awards and Recognitions
Marcela Trigo de Souza has been recognized for her work by the main legal directories' latest editions such as IAM Patent 1000, Chambers Global and Latin America, LACCA Approved, Leaders League, Latin Lawyers 250, Análise Advocacia 500 and The Legal 500.
She graduated from Universidade Estadual do Rio de Janeiro with a degree in Law and from The George Washington University Law School with an LLM in Patent Law, and also holds a master's degree in Civil Procedural Law from Universidade Estadual do Rio de Janeiro.
Activities outside the office
Marcela Trigo de Souza is often invited as a guest professor in extension and postgraduate courses, such as the postgraduate course in Intellectual Property from Pontifícia Universidade Católica no Rio de Janeiro, MBA in Legal Management from Escola Nacional de Seguros, postgraduate courses from Fundação Getúlio Vargas in Rio de Janeiro. She is the President of LES Brazil, Co-Chair of the Dispute Resolution Committee of the Brazilian Association of Intellectual Property (ABPI) and Member of the Anti-counterfeiting Committee from the Bar Association.
Besides, Marcela is also a frequent speaker in events and seminars in Brazil and abroad.
Author/co-author of several books/articles, such as:
- "Democracia virtual: privacidade e direitos digitais em xeque". Article published by Estadão in 30/06/2020. Available at https://politica.estadao.com.br/blogs/fausto-macedo/democracia-virtual-privacidade-e-direitos-digitais-em-xeque/. Access in 21/08/2020 (co-author);
- The International Comparative Legal Guide to: Patents 2012. A Practical Cross-Border Insight to Patents Law. Brazil. International Global Legal Group Publication, p. 27-32. A Victory for Pharmaceuticals. World Intellectual Property Review – WIPR, January/February 2011, p. 52 (co-author);
- The International Comparative Legal Guide to: Patents 2011. A Practical Cross-Border Insight to Patents Law. Brazil. International Global Legal Group Publication, p. 26-31.
Pharmaceutical Patent Owners on Alert. Life Sciences Intellectual Property Review 2010, p. 43-46 (co-author);
- "Should Brazil Allow Patents on Second Medical Uses?", Revista da ABPI 93, March/April 2008, p.53-67;
- "O Incidente da Suspensão de Execução de Decisões Liminares e Sentenças no Âmbito das Agências Reguladoras", Revista da ABPI 63, March/April 2003, p. 3645.
Portuguese, Spanish and English.
Representative matters and clients
– Represented a client from the telecommunications field in a lawsuit of national repercussion regarding cell phone antennas;
- Representend a client from the pharmaceutical field in a leading case involving ANVISA's prior approval to patent requests in the pharmaceutical field ( article 229-C from Law 9.279/96);
- Represented a syndicate from the pharmaceutical field in a leading case involving the use of trademark in vaccines;
– Obtained a highly relevant judicial order or a client from the telecommunications field in litigation involving patent related to the identification of calls in cell phones;
- Represented a multinational pharmaceutical company in a litigation involving false advertising and unfair competition, which ended in millionaire settlement agreement in favor of the client;
- Advised client, a world leading company in the healthcare industry, lighting and consumer products, to establish a well-succeed licensing program in Brazil;
- Handled the portfolios of relevant multinational pharmaceutical companies in Brazil, taking care of the prosecution of strategic and defensive patent applications before the BPTO, from filing to post-grant proceedings;
- Prepared non-infringement and invalidity opinions for several pharmaceutical companies aiming at launching their products in Brazil, in freedom to operate opinions;
- Worked on major projects of pharmaceutical marketing intelligence, including monitoring and securing access to importation and regulatory information through legal remedies to monitor local companies’ activities and possible patent infringing acts;
- Prepared third party observation briefs for a biochemical foreign company aiming at challenging pending applications before the BPTO;
- Represented a global pharmaceutical company against a Brazilian local pharmaceutical lab in a case for patent infringement of one of its blockbuster drugs.
- Successfully assisted foreign clients in requesting expedited examination of patent applications before the BPTO based in one of its fast-track programs;
- Guaranteed a favorable preliminary injunction suspending the effects of the BPTO’s rejection of divisional applications of one of our clients based in its restrictive analysis of Article 26 of the Brazilian IP Law;
- Acted for a major pharmaceutical company to obtain a successful preliminary injunction to prevent the launch of a product that violated the client’s patents;
- Represented a global healthcare company in successfully reversing a BPTO’s denial to approve a patent for its inventions in different countries in Latin America;
- Obtained a landmark decision rendered by the State Court of Appeals of São Paulo, which affirmed a preliminary injunction granted on behalf of a pharmaceutical company to prevent the launch of generic and similar products until the BPTO concluded the examination of the corresponding patent applications.
LGPD effective as of August 27, 2020* &...
The Brazilian General Data Protection Law (Law # 13,709/18 – “LGPD”) will be effective as of August 27, 2020*. Today, August 26, the Brazilian Senate rejected the House of Representative’s proposal to extend the LGPD’s effective date to December 31, 2020. The House of Representative’s proposal was included in the Bill of Law that resulted […]
Intellectual Property Updates in Brazil
In the past weeks, different developments occurred in the intellectual property field in Brazil. This e-alert addresses three recent updates that may impact our clients. Federal Government opens public consultation on the National Intellectual Property Strategy (ENPI). On 08/10/2020, the Inter-ministerial Group on Intellectual Property (GIPI), chaired by the Ministry of Economy, launched a public […]
COVID-19: Brazilian Senate postpones to...
On Friday, April 3rd, 2020, the Brazilian Senate approved the Bill of Law No. 1,179/2020, which postpones the entry into force of the General Data Protection Law (LGPD), currently scheduled to occur in August of this year. The Bill of Law regulates several legal impacts in Brazil during the national emergency declared in view of […]
COVID-19: NOTICE OF DEADLINE SUSPENSION...
The Brazilian Patent and Trademark Office (BPTO) published the following notices in the Electronic Official Bulletin No. 2657, of March 17, 2020: Due to the coronavirus (COVID-19) pandemic outbreak, deadlines are temporarily suspended from March 16, 2020 to April 14, 2020. In addition, the Office authorized remote working for public officers and announced that face-to-face services […]