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.
Bill No. 3227/20201, which intends to modify Internet content moderation rules, is sent to the National Congress
As reported in our last e-alert, on September 6, 2021, President Jair Bolsonaro signed Provisional Measure (“MP”) No. 1.068/2021, amending the Brazilian Internet Legal Framework, which regulates the use of the internet in Brazil. The MP was criticized by different sectors of society, who argued that it did not meet the applicable formal and material […]
Position marks available for registration in Brazil as of october 2021
After public consultation, the Brazilian Patent and Trademark Office (BPTO) issued Ordinance No. 37/2021, published in the Electronic Official Bulletin No. 2646, of September 21, 2021, authorizing the registration of position marks as of October 1, 2021. According to the BPTO’s definition in the ordinance, position marks eligible to registration are those formed by a “distinctive […]
Provisional Measure Intended to Modify Internet Content Moderation Rules
President Jair Bolsonaro signed Provisional Measure (“PM”) No. 1.068/2021 on 09/06/2021, amending the Brazilian Internet Legal Framework, which regulates the use of the internet in Brazil. The PM does not apply to messaging and mobile commerce apps, establishes “rights and guarantees” for users of social networks and defines rules for content moderation. The current general rule […]
Law on Compulsory Licensing of Patents is Sanctioned with Vetoes
In Brief Today Brazil’s President enacted Law n. 14.200/21 (former bill n. 12/21), which regulates compulsory licensing for patents and patent applications in cases of a declaration of national or international emergency, public interest or public calamity. The new legislation is one of the several recent developments affecting Brazil’s landscape on pharmaceutical patents, after the […]