INTELLECTUAL PROPERTY NEWSLETTER | Brazilian term of patents of 10 years from the grant is under judicial discussion: preliminary decision for pharma field
In a preliminary injunctive relief granted during the Court session of ADI 5529 on April 7, minister of the Supreme Court, Dias Toffoli, suspends the effects of the sole paragraph of article 40 of the Brazilian IP Law, which disposes that the term of validity of patents shall not be less than 10 years for patents of invention and 7 years for utility models, counting from the granting date. The decision, having ex nunc effects (the effects become in force from the decision on), is limited to pharmaceutical products and processes and equipment and/or materials for use in health. The discussion on the judicial action, which questions the constitutionality of said legal provision, will continue shortly and the result may be reviewed.
The issue revolves around the “extended” term of patent validity due to the delay of the Brazilian PTO (“INPI”) in carrying out the examination of the applications: the normal term of validity provided for in article 40 of the Brazilian IP Law – and generally employed by other countries – is of 20 years from the filing date of the patent application, whereas the patent granted under the terms of the legal provision now under discussion ends up with more than 20 years. It turns out that, for several historical reasons, the minimum term of 10 years, which should have been used in character of exception, ended up becoming relatively frequent in patents in Brazil within some technological fields. Despite the fact that the INPI has already taken effective measures to mitigate the delay in the analyzes and is successfully reducing the backlog, which would make the present discussion – already raised before the Judiciary –, meaningless, the matter gained strength due to the pandemic.
Regardless of the interests of each side of the discussion, the pros and cons of the actual decision, when it comes, and the repercussions of it in Brazil and abroad, what is under the spotlight from a practical point of view is when the decision would be applied, in the event of maintenance of the understanding of unconstitutionality. That is, what will be the effect (i) on the patents already granted under the terms of the sole paragraph of article 40 of the Brazilian IP Law, (ii) on the applications that have already been filed and would already benefit from this legal disposition, if granted (applications that were filed more than 10 years ago), and (iii) on the applications that have already been filed but are not under the benefit of this legal disposition (applications that were filed less than 10 years ago).
Depending on this, applicants/patent holders and the society itself would be more or less directly affected by the decision.
For further information, contact:
Ana Paula Celidonio
Isabella Katz Migliori
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