São Paulo Courts Open Route for Brazil’s Interim SEP Licensing

March 24, 2026

On March 20, 2026, Judge Mazutti from São Paulo Business Courts issued a landmark decision in the declaratory action Acer v. Nokia, case: 1052350-65.2025.8.26.0100.

In this ruling, the judge confirmed that Brazilian courts may issue interim licensing. He adopted an innovative procedure: a phased expert process. First, contractual and economic analyses are conducted; Second, technical essentiality is assessed. If the FRAND findings in the first stage are sufficient, the technical essentiality assessment may be reduced or even waived.

The case was filed on April 21, 2025, when Acer initiated a declaratory judgment action against Nokia before the São Paulo court. Acer requested the court to declare that patents BR112013002029, PI0011748, PI0110770, PI0211263, PI0214410 and PI0304565 are not standard-essential to the H.264 and H.265 standards. Acer also sought an interim license by the court of FRAND licensing rates for Nokia’s patent portfolio in Brazil covering the said standards.

On May 6, 2025, Nokia filed a patent infringement action against Acer before the Rio de Janeiro court, alleging infringement of its patent PI0304565-0.

The parties thus disputed jurisdiction. Acer argued that the declaratory action filed in São Paulo was accepted earlier than the infringement action in Rio de Janeiro, so the São Paulo court should have priority jurisdiction. Nokia contended that the São Paulo court lacked jurisdiction, citing an arbitration clause in the NDA signed with Acer in 2018.

It is as if UK courts have become the São Paulo courts, while German/UPC courts have become the Rio de Janeiro courts.

Indeed, the Rio de Janeiro courts are renowned for granting injunctions, whereas the São Paulo courts are still exploring issues such as FRAND rate determinations or interim licensing.

This raises a concern: unlike UK and German courts, which belong to two separate national judicial systems, having two opposing court approaches within one country like Brazil could cause problems, especially over jurisdiction.

In a WeChat article published this Januray, PRIP interviewed Rob Rodrigues from RNA Law on this matter.

Rob said，

“Yes. We understand we are going to see a conflict of jurisdiction between Sao Paulo and Rio de Janeiro. It is possible to have cases moving forward on both forums at the same time. However, all the further appeals go to the same court, i.e. the Superior Court of Justice and the Supreme Court of Brazil. They will ultimately be responsible to set up binding precedent for lower courts to follow. Until then, it is possible that we see conflicting decisions/systems between lower courts. I believe companies need to be ready to fully participate on the FRAND hearings with information that could show its willingness to license on RAND terms. This will be of paramount importance on both courts. ”

Acer v. Nokia is a typical example of this issue.

PRIP interviewed Rob again on the significance of Judge Mazutti’s ruling.

PRIP: Why is this judgment significant?

Rob: This case outlines some of the complexities of FRAND disputes, including the challenge of deciding preliminary injunctions (PIs) and assessing willingness/unwillingness in SEP cases, while also confirming the possibility of issuing interim licensing determinations in Brazil. The judge relies on the Huawei v ZTE framework to chart a pathway for Brazilian courts to evaluate willingness and propose next steps in SEP litigation.

Judge Mazutti understands the case is not a standard patent infringement case in which the SEP holder sues for an injunction and damages. Instead, it is a declaratory action in which Acer seeks a ruling that Nokia must license its declared SEPs on FRAND terms, that certain Nokia patents may not actually be essential, and that exclusionary measures should not be used before FRAND issues are properly resolved. That framing matters because it shapes his opinion: the court treats the case as a dispute about SEP licensing governance and essentiality, not as a straightforward infringement suit.

PRIP: How do you view the most important procedural innovation in this case: the phased expert procedure?

Rob: The most important procedural move is the court’s bifurcated expert process.

Even though essentiality might seem logically prior, the judge orders a first-phase contractual/economic expert review before any technical patent-by-patent essentiality analysis. He says that choice is justified both economically and procedurally: Acer has allegedly sold products implementing the standards for years without paying Nokia royalties; technical SEP essentiality analysis is slower and heavier; and a faster comparative FRAND exercise may either narrow the case or facilitate settlement. So the first question to be tested is not “are these patents technically essential?” but rather “was Nokia’s offer, in comparative market terms, FRAND and non-discriminatory?”

The first expert phase is built around comparable licenses (economical approach).

The judge directs the expert to compare Nokia’s offers to Acer — and Acer’s counterproposals — against up to 10 comparable third-party license agreements, selected by reference to objective comparability factors. The aim is to determine whether Nokia treated Acer in a non-discriminatory way and whether the proposed terms fit a FRAND range for this market. The court even leaves open the possibility that, depending on the first report, the parties may later seek interim protective measures such as deposits or guarantees while the case continues.

Only after that first phase will the court decide whether a second, technical essentiality phase is still needed.

The judge expressly says the second expert review — the one that would test whether the listed patents are in fact essential to the standards — is being reserved for later. Its necessity will be reassessed once the first expert report is in. The court’s reasoning is that, because licensing is done at the portfolio level rather than patent-by-patent in isolation, a strong first report on FRAND comparables may reduce or even eliminate the practical utility of immediate technical essentiality work.

PRIP: How does this approach help balance the interests of both parties?

Rob: Judge Mazutti describes the duality risks of patent hold-up and patent hold-out. On one side, a SEP holder can overcharge or use injunction pressure to extract supra-FRAND returns; on the other, an implementer can delay years, keep selling standardized products, and effectively gain a pricing advantage by not paying royalties. The judge makes clear that he does not view this as a one-sided morality play. He sees structural incentives on both sides and wants a process that tests them empirically.