Supreme Court Justice Toffoli issues a communication clarifying that pharmaceutical patents are not suspended

On April 7, 2021, Supreme Court Justice Hon. Dias Toffoli, surprisingly, issued a preliminary injunction relief in the docket of the Constitutional Challenge ADI 5529, which challenges the constitutionality of Article 40, sole paragraph, of the of Law No. 9.279/96 (Brazilian IP Law – IPL). After the judgment was postponed to April 14, 2021, the Hon. Justice anticipated his vote to consider the rule unconstitutional, and issued an injunction that suspended the effectiveness of the sole paragraph, except for patents already granted, regardless of its technological field of application However, due to the urgency caused by the COVID-19 pandemic, the Justice determined that the exception would not apply to pharmaceutical and medical device patents granted with an extension of time.

Nonetheless, on April 8, the Hon. Justice issued an order clarifying that his preliminary injunction has the “immediate effect of preventing the application of the sole paragraph of art. 40 of Law 9,279 by the INPI to patent applications still pending on a decision, in the case of patents related to pharmaceutical products and processes and equipment and / or materials for use in health”. However, the decision “does not have the effect of invalidating the acts already practiced by the BPO”, because the decision is a preliminary injunction.

As a result, no patent already granted by the BPO was affected by the preliminary injunction, regardless of its technological field of application. However, as of today and until the preliminary injunction lasts, the BPO, when granting patents in the area of ​​pharmaceutical products and processes and equipment and / or materials for use in health, “will not be able to do so to the extent provided for in the questioned norm, so that the privilege will last for the terms of the heading of art. 40 (20 years, in case of invention, and 15 years, in the case of a utility model, counting from the filing date). And this is true both for applications already filed which are waiting for a decision by the INPI, and for new requests.”

Hon. Toffoli’s decision can be subject to appeal and, in the judgment that will take place on the 14th, the Court shall vote on whether the preliminary injunction will be upheld and, also, may agree or disagree with his vote on the Constitutional Challenge.

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