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