RULING FROM THE SUPREME COURT (STF) WITHIN CLAIM NO. 5529 CONSTRUES AS UNCONSTITUTIONAL THE SOLE PARAGRAPH OF ARTICLE 40 OF BRAZILIAN IP ACT

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Article 40 of Brazilian IP Law – IP Act (Federal Law 9,279/1976) establishes that the term of patent protection for inventions in Brazil is of 20 (twenty) years from the filing date, in accordance with international agreements adhered to by the country. On the other hand, its sole paragraph guaranteed a minimum validity term of 10 (ten) years as of its granting:

Article 40. A invention patents will have a term of 20 (twenty) years and a utility model patent term of 15 (fifteen) years, counted from the filing date.

Sole Paragraph. The validity term will not be shorter than 10 (ten) years for invention patents and 7 (seven) years for utility model patents, counted from its granting, except when the BRPTO is barred from proceeding with the substantive examination of the application, due to proven pending judicial decision or for reasons of force majeure.

Consequently, this provision entailed the potential extension of the validity term of Brazilian patents as a compensation for the applicants if there is an excessive delay of the BRPTO (Brazilian Patent and Trademark Office) in analyzing the corresponding filings. In other words, if the BRPTO takes a long time to analyze the case, such patent will be valid for 10 years counted from the granting date and not from the filing, which is the general rule under the spectrum of international agreements adhered to by the country.

Accordingly, due to the increasing number of pending patent applications – known as the patent backlog – an expressive number of patents was granted with a validity term of 10 years counted from the granting date. Pursuant to data provided by the BRPTO, almost half of the patents currently in force in Brazil were granted based on the sole paragraph of article 40, adding up roughly 31,000 (thirty-one thousand) patents with a validity term that may exceed 30 years in the total sum of time since filing date.1

After a long discussion, on May 12th, 2021, the full board of the Brazilian Supreme Federal Court (STF) ruled as unconstitutional the sole paragraph of article 40. After such decision, the BRPTO, upon granting of a patent, shall no longer apply the validity term extension, so that the concession privilege shall be limited to the validity terms provided by the heading of article 40, they are: 20 years counted from the filing date for patents of invention and 15 years for patents of utility model. The ruling has immediate effects and applies to all and any category of invention, embodying both the already filed applications awaiting analysis and new applications.

On May 18th, 2021, the BRPTO published in the Official Gazette nº 2628 a communication following such decision, as well as attached a list of more than 3,000 patent applications under review that will be impacted by the new understanding.

 

Checked on August 9th, 2021. Available at: https://economia.estadao.com.br/noticias/geral,decisao-do-stf-sobre-nulidade-de-mais-de-31-mil-patentes-de-invencao-ameaca-retomada-da-economia,70003671258

MADRID PROTOCOL IN BRAZIL: BALANCE OF THE FIRST YEAR AND ITS BENEFITS

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According to statistics of the first year of validity of the Madrid Protocol in Brazil (up to September 30, 2020), national users have filed 109 applications for International Registration at the INPI (BRPTO – Brazilian Patent and Trademark Office). On the other hand, the number of designations received by INPI from foreign applicants exceeds 8,000 requests.

The Madrid Protocol, international treaty centrally administered by the International Secretary of the World Intellectual Property Organization (WIPO), relating to the international registration of trademarks, has been in force since April 1996 and was ratified by more than 124 countries representing more than 80% of world trade.1

The Madrid Protocol came into force in Brazil on October 1st, 2019, bringing several innovations to the Brazilian trademark registration system, facilitating the centralized filing and management of trademark applications by the brand owners in several countries.

The registration of trademarks from Brazil with the extension of its effects abroad has become quick and simple. Within the previous model, for instance, if a company would need to register its trademark in Colombia, China, Australia, USA, European Union, Mexico, United Kingdom, Canada and Japan, it would be necessary to engage an attorney-in-fact in each country, to incur in several fees, as well as to get involved in the implementation of several power of attorney instruments, translations and additional bureaucracy.

Now it is quite simple, for instance, to extend an already existing international registration to Brazil, besides enabling the centralizing in renewals management.

Other aspects of the Madrid Protocol are:

– With over 1.3 million trademarks registered, the Madrid Protocol is the preferred choice for international trademark registration among export-oriented brand owners;

– The possibility of the multiclass system: it allows the filing for all classes envisaged by the brand owner through one single application. In the case of Brazil, however, the analyzes will be carried out by class and upon payment of the full amount of charges for each requested class;

– International order system originated in Brazil: the INPI acts as the Office of Origin and as the Designated Office;

– There is no need to pay for translations nor to hire a representative in every country to which the extension of effects of a trademark is envisaged;

– Payment of one single set of fees to apply for trademark protection in multiple territories;

– The possibility of co-ownership;

– The division of applications became allowed and shall be done electronically upon filing the division may occur, for example, in connection with a suspended request.

Brazil has one of the world’s largest consumer market, with an overall population of 213 million as of 2021,2 appearing as the largest economy in South America and as one of the largest of the world.

The ratification of the Madrid Protocol is embodied in a larger shift in focus by Brazil into the promotion of innovation, and the development of Intellectual Property and technology aiming at the country’s growth.

 

Checked on August 9th, 2021. Available at: https://www.wipo.int/madrid/en/madrid_benefits.html#:~:text=With%20over%201.3%20million%20trademarks%20registered%2C%20the%20Madrid,brand%20owners.%20Convenient%20management%20of%20global%20trademark%20portfolios

Checked on August 9th, 2021. Available at: https://www.ibge.gov.br/apps/populacao/projecao/box_popclock.php