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ADI 5529 Judgment and the Issue Involving Patent Term

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On April 7, the Federal Supreme Court (STF) will judge the Direct Plea of Unconstitutionality (ADI) 5.529, pending since 2016.

The action was filed by the Attorney General’s Office (PGR), requesting the unconstitutionality of the sole paragraph of section 40 of the Industrial Property Law – LPI (Law nº 9.279/79), which, in short, establishes that the term of a patent will not be less than ten years for invention patents and seven years for utility model, counting from the granting date.

The core of this matter is the argument brought by PGR, that the sole paragraph hurts several constitutional articles, mainly regarding to temporary protection of patent protection and affront the principles of isonomy and legal security.

On the other hand, the arguments in favor of the constitutionality of the sole paragraph of Section 40 are strong. Despite of the mandatory temporary protection of patents raised by PGR, they have never had their term extended eternally. What happened was a legislator’s wish for a balance, to compensate the inefficiency generated by the lack of structural investment over the years at the Brazilian Patent and Trademark Office (INPI), which generated a huge backlog.

Also, to get a better understanding of the autarchy, the Justice Dias Toffoli recently officiated the INPI, requesting more details, such as the number of examiners and the average time for analyzing a patent application.

Undoubtedly, depending on the STF decision, the patent holds can be directly affected. However, it is important to note that, even in the event of a declaration of unconstitutionality, it may have the modulation of its temporal effects, that is, it can become effective only from the moment of the decision onwards, without affecting the previous patents granted. Nevertheless, if there is no modulation of the temporal effects, the patents granted based on the discussed sole paragraph will have their term readjusted, and may even be extinguished, if such term is before the date of the decision.

Notwithstanding the various possibilities, it is emphasized the understanding that there is no unconstitutionality in the LPI provision.

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