Member Article

The Federal Supreme Court of Brazil concluded the judgment of the lawsuit claiming the unconstitutionality of the sole paragraph of article 40, of the Industrial Property Law, referring to the minimum term of validity of patents in Brazil.

On May 12, 2021, the Federal Supreme Court of Brazil (STF) concluded the judgment of the lawsuit filed by the Attorney General’s Office (PGR) claiming the unconstitutionality (Case ADI 5529/2016) of the sole paragraph of article 40, of the Industrial Property Law (Law No. 9,279/1996 - IPL), referring to the minimum term of validity of patents in Brazil. 

Currently, the wording of Article 40 and its sole paragraph is as follows: 

“Art. 40. A patent of invention will have a term of 20 (twenty) years and a utility model patent a term of 15 (fifteen) years, counted from the filing date. 

 

Sole paragraph. The term will not be less than 10 (ten) years for patents of invention and 7 (seven) years for utility model patents, counted from grant, except when INPI is prevented from proceeding with the examination as to the merit of the application, due to a proven pendente lite or for reasons of force majeure.” 

In practice, how does the sole paragraph work? 

Assuming that an application for a patent of invention was filed at the National Institute of Industrial Property (INPI) in 2008 and, due to the delay in the technical examination, such application was granted only in 2020, that is, 12 (twelve) years after its filing date, according to the caput of article 40 of the IPL, the granted patent must remain in force for 20 (twenty) years from the filing date, that is, it will remain in force until 2028 (with only 8 years after its grant). According to the sole paragraph of article 40, this patent is guaranteed for a minimum term of 10 years from the issuance of the Letter-Patent, that is, it will remain in force until 2030 (2020 + 10), gaining an additional 2 years. 

The STF has decided for the unconstitutionality of the sole paragraph of Article 40 of the Industrial Property Law, meaning that the term of all patents of invention will be 20 years from the filing date and 15 years from the filing of utility model patents. This decision will take effect from the date of publication of decision onwards. 

Exceptions:

• Patents already granted with the application of the sole paragraph of article 40 of the Brazilian IP Law (IPL): when there is an ongoing lawsuit (filed on or before April 07, 2021) that aims at the constitutionality of the sole paragraph of article 40 of the IPL, regardless of the technological field, these patents lose the additional period that would follow from the sole paragraph of article 40 of the IPL. Patent Term: 20 years counted from filing date. The concrete effects already produced as a result of the validity of patents with an extended term are preserved, such as, for example, signed contracts and payment of royalties.
  
  
• The decision is valid retroactively and immediately for “pharmaceutical products and processes, and equipment and/or materials to be used for health purposes”. In practice, patents within this category lose the additional period that would follow from the sole paragraph of article 40 of the IPL, anticipating the end of the validity term of these patents. Patent Term: 20 years counted from filing date. According to the INPI, there are approximately 3,600 patents in this situation. The concrete effects already produced as a result of the validity of patents with an extended term are preserved, such as, for example, signed contracts and payment of royalties.
  
  
• Patents from other technological fields and which were already granted before the decision of unconstitutionality shall remain in force for the extended term due to the application of the sole paragraph of article 40, as a result of modulation.
  
  
• Patent applications already filed and still pending at the BPTO will no longer benefit from the extension of the term resulting from the sole paragraph of article 40. Patents of invention term: 20 years counted from filing date.
  
  
• New patent applications filed after the declaration of unconstitutionality will no longer benefit from the extension of the term resulting from the sole paragraph of article 40. Patent of invention term: 20 years counted from filing date. 

Rodrigo Ayres

Consultant

Veirano Intellectual Property