News

SUPREME COURT EXPECTED TO START RULING ON THE CONSTITUTIONALITY OF THE 10-YEAR MINIMUM PATENT TERM

14/05/2020

On May 22, the Supreme Court (STF) will start to rule complaint ADI 5,529, filed by the Federal Public Prosecutors’ Office (FPP) to declare Article 40, sole paragraph, of the Brazilian IP Law unconstitutional. The provision establishes an exceptional rule to guarantee that patent owners will have a minimum of 10 (for patents) and 7 (for utility models) years of exclusivity counted from the grant date. The general rule is that patents will have a 20 years term, while utility models will have a 15 years one, both counted from the filing date.  

This provision has been created as an attempt to remediate the Brazilian Patent and Trademark Office’s (BPTO) chronic backlog in examining patent applications, and guarantees that patent owners will have a minimum exclusivity term, avoiding a scenario in which the BPTO may grant patents that have already expired.

The FPP argues that Article 40, sole paragraph, of the IP Law, violates different constitutional principles, such as freedom of competition, legal certainty, consumer protection, efficiency and reasonable duration of the process. According to the complaint, the rule creates an indefinite term for patents and utility models, violating the Constitution.

Due to its possible effects on thousands of Brazilian patents, 7 entities have required to intervene in the case as amici curiae.

Considering the current COVID-19 scenario, the Rapporteur Justice Luiz Flux has determined the case be included in the STF’s virtual judgment agenda of May 22. All other 10 Justices will have up to 5-business days to vote on the Court’s system.  If any of the Justices does not vote within this deadline, the Court will consider they have followed Justice Fux’s vote.

In case the FPP prevails, ADI 5,529 may immediately produce effects in all granted patents and pending applications. Nevertheless, in order to assure legal safety, the STF may also modulate the effects of its decision, applying it only to patent applications to be filed after the Court’s ruling.

Our team is available for any further information in connection with this case, and will keep you posted on the next developments.

Share on Social Media

Facebook
Twitter
LinkedIn
Trench Rossi Watanabe
São Paulo
Rua Arq. Olavo Redig de Campos, 105
31º andar - Edifício EZ Towers
Torre A - 04711-904
São Paulo - SP - Brasil

Rio de Janeiro
Rua Lauro Muller, 116 - Conj. 2802
Ed. Rio Sul Center - 22290-906
Rio de Janeiro - RJ - Brasil

Brasília
Saf/s Quadra 02 - Lote 04 - Sala 203
Ed. Comercial Via Esplanada - 70070-600
Brasília - Distrito Federal - Brasil

Porto alegre
Av. Soledade, 550
Cj. 401 - 90470-340
Porto Alegre - RS - Brasil

press
JeffreyGroup
Nara Neri 55 11 3185.0800 | Ext.832
Cauê Rebouças 55 11 3185.0800 | Ext.832