Brazilian Court of Appeals definitively sets mailbox patents term at 20 years

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On April 27th, the Superior Court of Justice (STJ) concluded the trial of the Incident of Resolution of Repetitive Demands, establishing that the term of validity of mailbox patents is 20 years, counted from the filing date of the application with the Brazilian Patent and Trademark Office (BPTO).

The expression “mailbox patents” refers to pharmaceutical and agrochemical patent applications that were filed at a time of legislative transition in Brazil, given that the Industrial Property Code, published in 1973 and in force until May 1997, prohibited their protection. Thus, after Brazil became a member of the World Trade Organization (WTO), ratified its Constitutive Agreement and created the Industrial Property Law (LPI in Portuguese), which it is currently in force, the mailbox system was created as a way to ensure the protection of these inventions during the post-ratification transition period. Patents whose applications were filed between January 1st, 1995 and May 14th, 1997 are considered mailbox.

According to the sole paragraph of article 229 of the Industrial Property Law, to the mailbox patents apply the period provided in the caput of article 40, that is, a period of 20 years from the filing date of the invention patent. It should be noted that the legislator adopted this criterion for the validity of the patent, given that mailbox patents should, by law, be analyzed until December 31st, 2004 (art. 229-B). However, due to the fact that the BPTO failed to fulfill its obligations within the legal timeframe, the autarchy applied the sole paragraph of art. 40 of the Industrial Property Law when granting invention patents, whose term is 10 years from the grating date.

From 2013 on, the BPTO proposed several invalidation actions to reduce the validity of patents to a period of 20 years from their filing date. The original rapporteur, Judge Isabel Gallotti, proposed preserving the validity of patents in cases where the BPTO guaranteed 10 years from the grating date, in respect of principle of legal certainty and also because it was considered a reasonable position. However, the Judge Nancy Andrighi presented a dissenting vote in order to apply only and exclusively the caput of article 40 to cases of mailbox patents. The decision was followed by the majority formed by judges Ricardo Villas Bôas Cueva, Marco Buzzi, Marco Aurélio Bellizze and Moura brook. This decision is in line with the recent decision of the Brazilian Supreme Court (ADI 5529) which declared the unconstitutionality of the sole paragraph of art. 40 of the Industrial Property Law.

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