At the end of last month, the Brazilian Superior Court of Justice (STJ) published its first decision on a “mailbox” patent case. The purpose of the appeal was to define the rule applicable to the period of validity of the “mailbox” patent.
The term “mailbox patent” refers to patent applications related to pharmaceutical and agrochemical inventions that, prior to Brazil entering the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, were prohibited, but TRIPS required Brazil to provide patent protection in these areas. The mailbox system was created and applied to ensure the protection of such inventions during the transition period until the entry into force of new compatible legislation. The mailbox patents refers to those applications filed during that transitional period between January 1, 1995 and May 14, 1997.
According to the Brazilian Industrial Property Law of 1996 (LPI), all patent applications were eligible for protection for 20 years from the date of filing or 10 years from the date of grant.
The Brazilian Patent and Trademark Office (BPTO) granted protection to mailbox patents for 10 years from the date of grant, as was done for all patents, This was done because it is not uncommon for the BPTO to take longer than 10 years to issue a grant, but written into the LPI was a provision specific to mailbox patents: Those were only supposed to have been valid for 20 years from the date of filing, and were supposed to be granted until December 2004.
In 2013, INPI filed several nullity actions with the purpose of “adjusting” its administrative act and, consequently, reducing the period of validity for mailbox patents on the grounds of they had granted an undue extension of the patent exclusivity privilege, which could affect the generic market, free competition and social interest.
The Court ruled on this appeal that the mailbox patents are valid for 20 years from the date of filing, thus reducing their validity period.
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