Brazil’s Supreme Court rules on the effects of the recently declared unconstitutional extension of article 40 of its Patent Law

May 2021

A few weeks ago we carried out an analysis of the new guidelines for the examination of patent applications in the field of biotechnology in Brazil. With the publication on December 1st. 2020 in the Industrial Property Review RPI, this Normative Instruction INPI/PR no. 118/2020 came into force, establishing these new criteria and new developments in this area.

The main amendments made (especially in reference to patents in the biotechnology sector) affected the sufficiency of information, the list of sequences, subject matter not considered as an invention and various questions on antibodies in relation to their claims. But nothing in relation to the terms of validity, which falls under the competence of the Brazilian Patent Law.

The aforementioned Law (Law Nº 9.279 of 14 May 1996), which obviously also affects inventions made in the field of biotechnology as far as duration is concerned, was pending judgement in relation to the provisions of its article 40, relating to the aforementioned patent term, on which the Supreme Court had not been decided.

The focus of the controversy lay in the unconstitutionality or non-constitutionality of the “extension” of said article in its sole paragraph. It was finally declared unconstitutional. However, once this unconstitutionality had been agreed, the decision on the effects of this declaration was still pending: would it have retroactive effects? would it affect all patents granted and patent applications filed, or only those filed after this declaration?

Let’s put this in context:

Former wording of Article 40 (sole paragraph) of the Brazilian Patent Law:

“The patent of invention shall have a term of 20 (twenty) years and that of utility model of 15 (fifteen) years counted from the date of filing.

Sole Paragraph – The term shall not be less than 10 (ten) years for the invention patent and 7 (seven) years for the utility model patent, as from the date of grant, provided that the INPI is prevented from proceeding with the examination of the merits of the application, due to proven judicial pendency or for reasons of force majeure“. (Defunct)

Well, last Tuesday 18 May 20201 the Brazilian National Institute of Intellectual Property (INPI) published on its website a communication to inform users – and in particular, patent holders – of the decision finally adopted by the Supreme Court regarding the effects of the aforementioned article.

This means that the INPI is officially enforcing the Court’s decision and, therefore, the Court’s decision will have to be complied since its publication. In other words, as of now.

The decision adopted by the Supreme Court:

Through the aforementioned publication dated May 18, the Brazilian INPI makes clear what was adopted by the High Court as follows:

 “In compliance with the decision of ADI 5529, issued on May 13, 2021, by Minister Dias Toffoli, who extinguished the provision provided for in the sole paragraph of art. 40 of LPI, the same will no longer be applied to patents granted by INPI as of this date.

This means that all invention patents granted from this date will be valid for 20 years and that all utility model patents granted from this date will be valid for 15 years, counting from the filing date.

In addition, considering the modulation of the decision published on May 14, 2021, which establishes the ex tunc effect, retroactive, to patents related to pharmaceutical products and processes and to equipment and / or materials for use in health, patents in these areas will suffer adjustments to their validity terms.

For the purpose of adjusting the term and eventual extinction, all patents granted with some extension of term (under the extinct sole paragraph of Art. 40), which were still in force on 05/14/2021, were considered. The methodology used to select the patents that will undergo adjustments in the terms of validity, in addition to the initial list of patents, can be found in the INPI´s Official Bulletin No. 2628, published Today ( 05/18/2021), and will be made available on the INPI´s website”.

This publication of yesterday from INPI mentioned a preliminary list of 3.341 patents that must be adjusted and/or declared extinct. The INPI will continue the internal work reviewing their database and we can expect further news on this matter in the following weeks”.

However, it is finally declared that all patents granted as of 18 May 2021 will be valid for 20 years, and utility models for 15 years, both counted from the filing date. And this with the special consideration that the INPI makes in regarding to patents related to pharmaceutical products and processes and to equipment and/or materials for healthcare use, which will undergo adjustments in their terms of validity.

For greater clarity, the INPI publication provides a list of 3,341 patents that have been affected by the Supreme Court’s decision, so that some will become extinct and others will have to adjust their term.

You can consult the INPI publication HERE (buletin of 18.5.21)

Natália Menezes