INTELLECTUAL PROPERTY NEWSLETTER | Final judicial decision on the modulation effects derived from the unconstitutionality of the minimum term of patent protection in Brazil (ADI 5529)
The judgment of ADI 5529 – judicial action at the Brazilian Supreme Court regarding the unconstitutionality of the sole paragraph of article 40 of the Brazilian Industrial Property Law (Law Nº 9.279, of 1996) related to the term of protection by patents – was concluded yesterday (May 12, 2021) with the establishment of rules on the modulation of the effects of the decision of May 6th, 2021, which considered the sole paragraph of article 40 unconstitutional. Said paragraph provided for the minimum term of patent protection in case of delay in the analysis of the application by the Brazilian PTO (INPI).
The normal term of protection provided for in article 40 of the Brazilian IP Law is of 20 years from the filing date of the application for patent of invention, whereas the patent granted under the terms of the sole paragraph had a validity term of 10 years from grant, ending up with more than 20 years of protection.
According to the decision, the modulation is as follows:
- Ex nunc (prospective) effect for all technological areas, from the publication of the minutes; that is, all patents of invention will be granted with a term of protection of 20 years from the filing date of the patent application.
The following situations are exempt from modulation (ex tunc – retroactive – effect):
- Patents relating to pharmaceutical products and processes and equipment and/or materials for use in health; that is, patents of invention in the pharmaceutical field that have been granted on the basis of the sole paragraph will have the term of protection reduced to 20 years from the filing;
- Patents in any technological area being challenged in lawsuits having as object the unconstitutionality filed until (and including) April 7th, 2021 (date of the preliminary injunction that suspended the effects of the sole paragraph for the pharmaceutical field).
It is worth pointing out that any concrete effects already produced as a result of the extended term of protection of these patents are maintained.
Therefore, the patents of invention of the other technological areas in force for more than 20 years from the filing date will not be affected by this decision. On the other hand, it is estimated that around 11.2% of the patents in force under the sole paragraph will have their terms reduced.
For further information, contact:
Ana Paula Celidonio
Isabella Katz Migliori
Time de Propriedade Intelectual
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