On April 07, 2021, the Supreme Federal Court would begin the judgement of the Direct Action for the Declaration of Unconstitutionality (ADI) 5529, filed by General Attorney’s Office asking the declaration of unconstitutionality of the sole paragraph of article 40 of the Brazilian Industrial Property Law (Law nº 9.279/96).
However, the trial of the case in plenary session, composed by the all eleven Justices, had to be postponed, as result of the priority judgment of a case related to Covid-19 pandemic.
Furthermore, in view of the high relevance of the matter, the Justice Rapporteur Dias Toffoli has issued a preliminary injunction, ordering the immediate suspension of the application of the sole paragraph of article 40 of Law 9.279/96 to patents granted from April 08, 2021, related to pharmaceutical products and processes and instruments and materials for health purposes.
As a rule, the exclusive rights ensured by an invention patent shall be valid for 20 years, and for the utility model patents are valid for a period of 15 years, always as from the filing date the application.
The sole paragraph of article 40 of Law 9.279/96, however, determines that the term of validity of invention patents shall not be less than 10 years, counting from the granting date. For utility models, the term shall not be less than 7 year from the granting date, unless the Brazilian Patent and Trademark Office (INPI) is prevented to proceed with the examination on merits of the applications due a judicial order or reasons of force majeure.
Therefore, the sole paragraph of article 40 of Law 9.279/96 ensures a minimum term of validity to the patents, being applicable, mainly, in cases in which the examination of the patent by the INPI takes a long time, ensuring to the holder a minimum term of exclusive rights. The application of this provision creates a situation in which the patent may be valid for a term of more than 20 years for an invention patent or more than 15 years for utility model patents.
As a consequence of the Justice Dias Toffoli decision, when the Brazilian Patent and Trademark Office grants patents related of pharmaceutical products and processes and instruments and materials for health purposes, will not be able to do with the term extension provided in the sole paragraph of Article 40 of Law 9.279/96.
Therefore, at least until the judgement of the case in plenary session by the 11 Justices of STF, the patents granted from April 08, 2021 shall take effect for not more than 20 years, for the inventions, and not more than 15 years, for the utility models.
The rule is valid both for applications already filed and pending of decision by the INPI, as well as for new patent applications, exclusively filed in connection with pharmaceutical products and processes and instruments and materials for health purposes.
On the other hand, the preliminary injunction does not interfere with patents granted until April 07, 2021, which will have maintained the validity term already granted by the INPI, according to the sole paragraph of article 40 of Law 9.279/96, regardless of the patent’s field. This scenario, however, may be changed by the Plenary of the Supreme Court. The plenary session is not scheduled yet, but is expected to be held soon.
The Ricci Intelectual Property follows monitoring the case, in order to guide and preserve the clients’ interests.
