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