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The End of the Minimum Patent Term in Brazil: Implications of the Brazilian Supreme Court’s Decision

The Brazilian Supreme Court has concluded the judgment on the constitutionality of the sole paragraph of article 40 of the Brazilian Industrial Property Law. On May 6^th, the session of the court decided that such provision was unconstitutional. The session of May 12^th has settled the prospective and retroactive effects of such ruling.

We draw your attention to the fact that according to the caput of article 40 of Brazilian IP law, the term of a patent of invention is 20 years counted from the filing date and 15 years for a patent of utility model. Such patent term validity will remain in force. On the other hand, the sole paragraph of Article 40, considered unconstitutional, states that a patent of invention and a patent of utility model shall be in force for at least 10 and 7 years, respectively, counted from the issuance date.

Therefore, since said sole paragraph was considered unconstitutional, in case Brazilian PTO takes more than 10 years to carry out the examination of a patent of invention or 8 years for a patent of utility model, the upcoming Letters-patents will be automatically issued with no minimum validity term. The patent term will be limited to 20 years counted from the filing date for patents of inventions and 15 years for patents of utility model.

Additionally, the Supreme Court has decided that specifically for pharma related products and methods as well as medical equipment and supplies, the unconstitutionality of the sole paragraph of article 40 has retroactive effects (ex-tunc), thus encompassing the already granted patents. Therefore, the patent term adjustments eventually applied to those patents, based on the provisions of the previously mentioned sole paragraph of article 40, will no longer be in force. However, the court also settled that all legal agreements that already produced concrete contractual effects shall be respected. We stress that for all other technologies the effects of the Supreme Court sentence will only have prospective effects (ex-nunc).

Given the Court decision, it is advisable that (i) companies/applicants with granted patents in pharma/medical sector analyze eventual license or agreement related to these assets to avoid potential questioning of their validity; (ii) companies/ applicants with patent applications of any sector with pending patent examination in Brazil should evaluate available mechanisms to expedite examination in the Brazilian PTO; and (iii) Brazilian authorities develop a substitute to the now-unconstitutional provision of the IP law to avoid the country being too discrepant to practices of many other jurisdictions where an extended protection terms can be requested to compensate, at least in part, for loss of the effective period of protection due to excessive delays in patent prosecution by government bodies.

ClarkeModet team is very keen to cooperate with clients and devise the best strategies available so as to expedite the prosecution. In case of any questions, please feel free to contact us on brj@clarkemodet.com.br.

Ricardo Boclin