In line with the Supreme Court’s decision on ADI 5529 regarding the extinction of sole paragraph of Article 40 of the Brazilian IP Law based on unconstitutionality, and the subsequent modulation of the decision, published on May 14, 2021, which established the retroactive effect (ex tunc) to patents related to pharmaceutical products and processes and to equipment and/or materials for use in health, the Brazilian Patent Office (BPTO) published in the Industrial Property Gazette (RPI) No. 2628, of May 17,2021, a notice regarding the adjustment of validity term and eventual extinction of all patents granted (under the terms of the extinct sole paragraph of Article 40), which were still in force on May 14, 2021.
According to such notice, the patents have been divided in two groups: i) the ones that have not surpassed 20 years counted from the filing date (or 15 years, for utility models); and ii) the ones that have exceeded 20 years from the filing date (or 15 years, for utility models). Considering these groups, the BPTO will take the following actions:
- Patents related to pharmaceutical products/processes, as well as equipment and/or materials for healthcare, which have been granted with validity term extension but still out of such extension on May 14, 2021, will be reissued;
- Patents related to pharmaceutical products/processes, as well as equipment and/or materials for healthcare, which have been granted with validity term extension and inside such extension on May 14, 2021, will be reissued and be considered expired.
In order to select said patents, the following criteria were adopted:
- Patents which have received notification code 7.4 (forwarding to Brazilian Health Surveillance Agency (ANVISA) for prior approval);
- Patents having IPC classification: A61B, A61C, A61D, A61F, A61G, A61H, A61J, A61L, A61M, A61N, H05G, A61K/6, C12Q/1, G01N/33, G16H;
- Patents having a lawsuit decision issued (notification code 19.1);
- Certificates of Addition already granted.
As from the said edition of Official Gazette, the BPTO will publish, weekly, a listing of patents that will undergo correction of the validity term, through the rectification of the Patent Letter, and eventually extinction, for cases in which the extension term has already being enforced.
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