In an interesting set of developments, the term of validity of patents in Brazil was recently challenged before the Brazilian Supreme Court. Earlier a Patent granted to an invention in Brazil used to be effective:
- for 20 years from the date of filing, or
- for 10 years from the date of grant; whichever is longest.
However, pursuant to the Brazilian Supreme Court’s order the term of validity of Patents has been reduced from 10 years from the date of grant to 20 years from the date of filing.
Brazil Term of Patent Validity- 20 years from Date of Filing
On April 7, 2021, the Reporting Judge in the case decided to partially grant the injunctive relief, thereby preventing the Brazilian Patent Office (BPTO) from granting new pharmaceutical and medicines, patents for a term of ten years from the grant as prescribed under Section 40 of Brazilian Patent Law. It is pertinent to mention that though this injunctive measure solely affected the pending applications within the field of pharmaceutical and medicines, and not to the granted patents or the pending applications which were covered under the other prevalent technological fields.
On May 6, 2021, the Brazilian Supreme Court ruled by a majority of 9:2 in respect to the merits of the case and held that the protection granted for a period of 10 years from the date of grant was unconstitutional and further directed the BPTO to start granting patents for a term of 20 years from the filing date, irrespective of technological field of the invention.
On May 12, 2021, the Brazilian Supreme Court enunciated by a majority of 8:3 rules, that as a general rule, its decision shall have no effect on the granted patents, with exception to:
- patents granted under the pharmaceutical and medical fields, and
- patents that were subject to invalidity proceedings filed until April 7, 2021, wherein, submissions had been made at the time of arguments that the term of 10 years from the grant provision (Section 40) of Brazilian Patent Law is unconstitutional.
In respect to the above-mentioned exceptions, the Brazilian Supreme Court decided that their term of validity should be reduced from 10 years from the date of grant to 20 years from the date of filing. Furthermore, it has also been indicated that there should be no right to claim any damages for royalties already paid or for purchasing a patented product when a cheaper one could have been available.[1]
In consonance with its earlier directions, the Brazilian Supreme Court further held that the term of the patents which have already been granted in respect to other technological fields will remain the same and would not get affected by the decision, except for those patents related to pharmaceutical products and processes, as well as equipment and materials used in the healthcare sector, which will have their validity reduced based on retroactive effect.[2]
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[1] https://www.daniel-ip.com/wp-content/uploads/2021/05/Client-Alert-Patents-3.pdf
[2] https://www.lexology.com/library/detail.aspx?g=44a932d4-0926-418b-ad52-5938f572fc15