On April 07, 2021, the Justice Dias Toffoli, from the Supreme Court of Justice, ordered the suspension of the sole paragraph of article 40 of the Brazilian Industrial Property Law related to pharmaceutical products/process and health device patents. The decision derived from a preliminary injunction request filed by the Public Prosecutor Office in view of the postponement of the judgement of a lawsuit which discusses the constitutionality of the referred legal provision.
As per the general rule, patents have a minimum term of 20 years and utility models a minimum term of 15 years counted from the filing date before the Brazilian Patent and Trademark Office (BPTO). In view of the time taken by the BPTO to analyze patent applications (more than 10 years in several cases), the legislator decided to guarantee the minimum term of 10 years for patents and 7 years for utility models counted from the granting decision.
In practice, there is an additional term for patents and utility models on behalf of the applicant. For instance, if the BPTO takes 15 years to analyze a patent application, the term of the patent will 10 year counted from the granting decision and, therefore, 25 years counted from the filing date.
In view that, the Public Prosecutor Office filed a lawsuit arguing the unconstitutionality of the sole paragraph of article 40 based on the violation of the free competition, legal certainty and consumer rights in view of the undue and undefined extension of the patents term, benefiting the patent owner at the expense of the whole society and jeopardizing the competition.
The decision is provisory and may be confirmed or rejected by the other 10 Justices. The rule which will be applied until the final decision of the Supreme Court of Justice is the following:
- Patents and utility models granted before the decision: no impact;
- Pharmaceutical patents to be granted after the decision: 20 years counted from the filing date regardless the time taken by the BPTO to analyze the application;
- Other patents to be granted after the decision: minimum 10 years term applicable.
In case the other justices ratify the reporting justice vote:
- Pharmaceutical patents granted before the decision: immediate extinction in case it is in force for more than 20 years counted from the filing date;
- Other patents granted before the decision: no impact with the exemption of the ones which are being discussed before the courts;
- Patent applications: 20 years counted from the filing date with no minimum 10 years term.
More information is available at http://portal.stf.jus.br/noticias/verNoticiaDetalhe.asp?idConteudo=463755&ori=1.
The preliminary injunction can be obtained (in Portuguese) at http://www.stf.jus.br/arquivo/cms/noticiaNoticiaStf/anexo/ADI5529liminar.pdf.