Montaury Pimenta, Machado & Vieira de Mello

Montaury Pimenta, Machado & Vieira de Mello brings together highly experienced and capable attorneys, patent attorneys, engineers, industrial property agents and paralegals practicing in the field of intellectual property law. The firm provides advice across all aspects of IP rights, as well as in related areas. The services include strategic advice, legal analysis, searches, registrations, the filing of oppositions, administrative and judicial disputes, as well as the drafting of franchise contracts and the transfer of technology.

In addition to this, the firm has reported a remarkable growth, upholding an outstanding position in the market, especially regarding strategic and complex litigation, patent matters, including trademark and patent filing and prosecution, freedom-to-operate and infringement opinions.

Montaury’s reputation for resolving disputes before Brazilian IP courts is one of the firm’s top remarks, having experienced patent and trademark lawyers with a successful track record in handling domestic and international complex litigation and counseling before Federal and State courts.

The firm's litigation practice is very active and combative, always focused on efficiency and obtaining results. The work is based on four principles: agility, ethics, commitment and results. The firm has also a team dedicated to online brand protection and anti-piracy programs.

Main areas of practice
IP litigation: The firm's litigation practice handles complex litigation and counseling with a high rate of success and covers the areas of patent disputes, including enforcement, invalidity actions and all legal remedies in different fields of technology, designs, copyrights, trademark infringement and invalidity, unfair competition, digital law, and advertising law disputes.

The team is very committed and is composed of experienced trial attorneys, supported by engineers, pharmacists and biochemist all highly committed with the litigation strategy.

Trademarks: The firm has expertise to provide the best strategies available for the protection of trademarks, both in the domestic and international markets. The services include: trademark searches; preparing and filing trademark applications; monitoring and advice regarding conflicting marks; tracking the registration process before the BPTO and corresponding international entities; administrative motions including oppositions, replies to oppositions, appeals, compliance with office actions; nullity actions; data alteration before the BPTO and corresponding international entities; renewals; drafting trademark legal opinions.

Patents, utility model and industrial designs: The firm has highly trained technical staff and provides reliable, high quality representation at all stages of the patent prosecution process, from the preliminary administrative level to the courtroom (prior art searches; patent analysis, applications and filings; follow-up of prosecution procedure at the BPTO; court actions) and payment of annuities. Furthermore, the team has the expertise to prepare technically precise and visually appealing applications for design registrations that will not only enhance the commercial viability of the product, but will also satisfy the requirements for filing with the BPTO.

Freedom to operate: The firm’s patent attorneys have extensive experience providing clients with crucial information for their FTO searches so that they can evaluate the risks involved in introducing new products to the Brazilian market and minimising the chances of third party rights infringement claims.

Life science: The firm is one of the top four Brazilian firms specialised in pharmaceutical patent litigation, especially in the state and federal courts of Rio de Janeiro and Sao Paulo. The patent team is composed of experts in the prosecution and enforcement of pharmaceutical and biotechnology patents

Plant varieties: The firm offers consulting services in the specialised field of 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 protection through payment of annuities.

Copyright and software: The firm provides expert advice on all aspects of copyright law, including protection of computer software and programs, assisting clients in all steps of the process from registration of the copyrights to drafting and negotiating licensing and assignment agreements.

Licensing: The firm’s attorneys have broad and diverse expertise in preparing and negotiating contracts pertaining to IP portfolios, as well as the tax and labour laws which impact IP rights, thereby providing clients with an advantage in all stages of consultation and preparation of the documentation required for registration at the BPTO.

Advertising and marketing law: The firm has skilled and experienced professionals in the preparation of contracts and other documents related to advertising and marketing activity; legal analysis of advertising campaigns to ensure compliance with applicable regulations and potential conflicts with the rights of third parties; drafting regulations for cultural competitions, sales promotions, loyalty, and incentive programs.

Digital law: The firm is highly specialised in assisting clients in all questions related to internet law and rights, including civil responsibility of service providers, data privacy; copyrights, trademarks, sponsored links, trade-dress protection of websites and domain name disputes through the UDRP and Brazilian SACI- ADM proceedings.

Anti-piracy programs: The firm is committed to preventing illicit products from entering the Brazilian market and has a team of specialised professionals with the necessary experience and expertise to enforce the law and fight counterfeit goods at all points of the cycle including: identification of sales and stocking spots; locating manufacturers of counterfeit products; monitoring websites and classified electronics online; representing clients before customs offices all over Brazil; and taking action in the courts to cease the infringement.

Startup desk: The firm's startup desk was created especially to assist startups, focused on innovation, on issues related to the adequate protection of intellectual property rights (IP) in Brazil and abroad, contributing to the growth of this sector and the expressive appreciation of these companies that start to have exclusive rights over their creations.The firm offers the best strategic legal advice in the areas of​​ IP and licensing of these rights for startups and their entrepreneurs. Focused on mitigating possible problems, Montaury assists startups in a partnership system, enabling them to safely navigate their route to success.

International work: Through its network of carefully selected associate firms across Brazil and worldwide the firm is in the ideal position to offer high quality, fast and reliable support

Clients: Clients include internationally recognised companies from diverse industries such as: chemical, biological, pharmaceuticals, electronics, telecommunications, mechanical, Internet, services, education, medical services, entertainment, restaurant and hotels, financial services, cosmetics, fashion, software.