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A new strategy to get patent terms extended in Brazil

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Contrary to other jurisdictions (such as the EU, USA, Israel, Japan, Singapore, Australia, Russia), the Brazilian Intellectual Property Statute does not foresee mechanisms similar to USA’s PTE and Europe’s SPC to extend patent terms. Considering Brazil’s historic backlog to evaluate patent applications, many criticize the lack of similar mechanisms in the Country.

It is true that the Brazilian Patent and Trademark Office is successfully fighting its backlog (according to official data, the BPTO reduced 66,8% of its backlog by August 2021). Still, this controversy reached its peak when the Supreme Court declared that the sole paragraph of article 40 of the Brazilian Intellectual Property Statute was unconstitutional. The rule used to determine that no Brazilian Patent should have a term shorter than 10 years counted from the date of grant. With the sole paragraph being declared unconstitutional, most Brazilian Patents are now subject to a 20-year term counted from the date of filing (for more details, click here)

During the trial which declared that rule as unconstitutional, the winning vote by Justice Dias Toffoli expressly mentioned that multiple countries have legal rules allowing patent extensions, but such extensions are non-automatic and based on clear parameters. Some consider that this means that the Supreme Court finds patent extensions to be constitutional, as long as they are analyzed on a case-to-case basis.

With grounds on that interpretation of the Supreme Court’s recent decision and on the Constitutional provision for “the reasonable duration of the [administrative or judicial] procedure”, a few lawsuits have recently been filed before Federal Courts seeking to extend a patent term, based on the allegation that the BPTO failed to secure the applicant’s constitutional right for the durable duration of the procedure, which caused damages that must be compensated by the extension of the patent term.

Many consider this a very ambitious plan. However, a pending case has shown that this may very well be a successful attempt to secure IP rights in Brazil for longer than expected. In Johnson & Johnson v. INPI (Case Files 1054805-65.2021.4.01.3400), the Federal Court for the 1st Circuit granted an injunction in favor of J&J to suspend an administrative act by the BPTO that reduced patent’s PI 0113109-5 term based on the Supreme Court’s decision to declare the sole paragraph of the IP statute as unconstitutional. The Federal Court’s decision, which cited excerpts from the Supreme Court’s decision, was grounded on two main reasons: first, there was evidence of unjustified delay by the BPTO to analyze J&J’s patent application, and, second, the term reduction may cause irreparable damage to J&J. The case is still pending on further development, and the injunction may be reverted.

Because J&J’s Case has not reached a final decision yet, it cannot be considered a precedent per se. However, this is a reminder that patent owners and applicants in Brazil should keep an eye open for opportunities of managing their IP portfolio in the 10th largest consumer market of the world.

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