On May 6, 2021, nine out of eleven Justices in the Brazilian Supreme Court ruled that the sole paragraph of article 40 of the Brazilian IP Act (Federal Law 9.279/1996) is unconstitutional.

The rule, which was challenged by the Facial Challenge 5529, sets forth that the term of validity will not be less than ten years for patents of invention and seven years for utility model patents, counted from grant, except when BPO is prevented from proceeding with the examination as to the merit of the application, due to a proven “pendente lite” or for reasons of “force majeure”.

During the next trial session, which is expected to occur on May 12, 2021, the Court will decide on the modulation of effects of the decision (i.e. considering legal certainty or exceptional social interest, the Supreme Court may, by a two-thirds majority of its justices, restrict the effects of their decision or decide that such decision will only be effective as of a time mark set by the Court).

Currently, there are three different proposals of modulation: Hon. Marco Aurélio argues that, because the rule is void, all patents granted with the application of the sole paragraph must be affected by the decision. Hon. Dias Toffoli, on the other hand, argues that the rule should be kept in order to protect patents granted before the Supreme Court decision with the application of the sole paragraph, except for pharmaceutical and medical device patents. Finally, Hon. Gilmar Mendes argues that the decision should not affect granted patents, except for those who protect technologies that are used to fight and control the COVID-19 pandemics