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News - 26/10/20

Patent terms in Brazil are in the hands of the Brazilian Federal Supreme Court (STF)

The judgment of the Direct Action of Unconstitutionality 5529 (ADI 5529) by the Brazilian Federal Supreme Court (STF) will decide on the constitutionality of the sole article of article 40 of the Brazilian Industrial Property Law (LPI), Law nº 9.279/96. According to the defended in the ADI 5529, the aforementioned provision would allow the existence of an indefinite term for the validity of patents for utility and invention models, disrespecting the constitutional principle of the temporary nature of patent protection, according to article 5, item XXXIX, of the Brazilian Federal Constitution.

There is an expectation that the ADI 5529 trial will be resumed and carried out this semester, since its rapporteur, Minister Luiz Fuz, assumed the presidency of the court this September.

The mentioned article paragraph, by allowing the extension of the patent term, due to the delay in the appreciation of the application by the Brazilian National Institute of Intellectual Property (INPI), also goes against the international standard on the matter, in addition to possibly disobeying the constitutional provision mentioned.

The international practice as to the starting point for counting the term of validity of patents is at the time of filing the application. The Brazilian legislation incorporated this guideline by editing the LPI in 1996, determining the term of 20 years of protection for invention patents following this counting method, starting at filling.

Therefore, the rule, according to Brazilian law, is that the creator of a patent has exclusivity to exploit profits of the product for a period of 20 years from the date of the official application for approval of the patent with the INPI for analysis of the creation and of the temporary patent right.

However, the sole paragraph of article 40 of the LPI establishes the possibility of extending this period, if the conclusion of the administrative proceeding takes more than 10 years to happen, for cases of invention patents. Therefore, in practice, as provided for in this provision, patents terms are extended as a consequence of the INPI´s delay in carrying out the analysis of applications.

This possibility of extending the term of patents would bring, as defended in ADI 5529, a lack of legal certainty, in addition to representing a challenge for economic competitiveness in the impacted markets.

The outcome of the judgment of this process can have a significant impact in the economy. The pharmaceutical industry, in this sense, is one of the players that has great interest for the prevision under analysis to be declared unconstitutional, since, for example, many generic drugs can only be produced after the patents of the products have expired.