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Brazilian Supreme Court brought forward the date of the judgement about the unconstitutionality of the sole paragraph of Art.40 of Brazilian Industrial Property Law

  • 09 March 2021
  • New legislation

The Brazilian Federal Supreme Court – STF – brought forward to next Abril 07, the date of the judgment on Direct Unconstitutionality Action No. 5529, the ADI 5529/2016.

The ADI 5529/2016, was filed in 2016 by the Brazilian Public Prosecutor of the Republic before the STF, which challenges the constitutionality of the sole paragraph of article 40 of the Brazilian Industrial Property Law – BR IP Law.

The sole paragraph of article 40 of the BR IP Law, establishes a minimum term of validity of 10 years for patents of invention and 7 years for a utility model patents, counted from the granting date by Brazilian Patent and Trademark Office – BRPTO.

However, the general rule of the caput of article 40 of BR IP Law stablishes that patents of invention and utility models will have a 20-year and 15-year exclusivity period, respectively, counting from the filing date at BRPTO.

The above-mentioned sole paragraph was included by the Legislator in order to guarantee the inventor a period that represented a guarantee due to the context of the processing of patent applications by BRPTO, which has always been very time consuming.

So, the object of the Legislator was to ensure that the applications backlog with BRPTO would not present a liability to the applicants and that the holders would have a minimum exclusivity period. Otherwise, the backlog would present a possibility of the BRPTO granting expired patents.

Given the differences between the sole paragraph and the general rule, the Public Prosecutors allege that the sole paragraph violates constitutional principles, such as: free competition, legal certainty, consumer protection and processes reasonable duration.

An eventual STF decision against the validity of the minimum term of the Letters-Patent may impact plenty patents already granted with such patent term extension, as well as numerous patent applications pending for more than 10 years before the BRPTO.

However, to ensure legal certainty, the Supreme Court could modulate the decision’s effects in order to avoid that the protection term of granted and still pending from analysis patents is affected and that is why several entities have already presented their opinions to the lawsuit as amicus curiae.

Last Friday, March 5, 2021, the Chief Justice of the Federal Supreme Court Luiz Fux, rescheduled the ADI 5529/2016 judgement session to April 07, 2021, and we hope that the decision to be rendered by the Supreme Court does not in any way harm the holders of invention patents and/or utility models, as well as the applicants.

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