Breaking: Brazil SC rules patent extensions unconstitutional
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Breaking: Brazil SC rules patent extensions unconstitutional


In a nine to two ruling, justices decided in Direct Action 5,529 to remove the guarantee of a 10-year minimum term for successful drug patent applicants

The Brazil Supreme Court yesterday removed the guarantee of a 10-year minimum term for successful pharmaceutical patent applicants.

Ruling nine to two in Direct Action 5,529, the court rendered the sole paragraph of Article 40 of Brazil's Industrial Property Law unconstitutional.

The court will come together again next Wednesday, May 12, to decide whether the ruling should have retroactive effect.

If the justices decide that it does, granted patents for pharmaceutical and biotech inventions would have their term of validity reduced to 20 years counted from the filing date, instead of 10 years counted from the date of grant.

That means that patents that were held up by long waiting times at Brazil's IP office would have their terms significantly cut. 

As a general rule, a Supreme Court decision invalidating a legal provision does have retroactive effect. But if eight or more justices agree, the court could decide that retroactive effect should not take place in a particular case. 

The reporting justice for this case, Dias Toffoli, has proposed that granted patents should not be affected by this decision, with two exceptions: patents in the pharmaceutical and medical fields, and patents whose validity terms are being challenged before courts based on arguments that the sole paragraph of Article 40 violates the constitution.

Justice Marco Aurelio indicated he believed there should be no exceptions to the court’s retroactivity rule, and that the decision should affect all granted patents. 

Meanwhile, Justice Gilmar Mendes indicated that a retroactive effect should be limited to pharma and medical patents related to COVID-19.

Justice Roberto Barroso mentioned he would agree with an exception related to patents that are subject to invalidity lawsuits, but not with an exception for patents in the pharmaceutical and medical fields, because this would violate the TRIPS Agreement.

Ricardo Nunes, partner at Daniel Law, said: “Even the justices that already articulated their initial thoughts on whether a decision should affect granted patents or not can still change their minds when the court happens to discuss this matter, so this is still a completely unsettled issue.”

On Wednesday, May 5, the justices at the Brazil Supreme Court started handing down their opinions on Direct Action 5,529, and finished yesterday.

The news comes after the Supreme Court suspended patent-term extensions in Brazil on April 7 in the lead up to the Direct Action 5,529 trial, in an attempt to lower costs for drugs critical to treating COVID patients at the expense of pharmaceutical firms.

Sources told Managing IP last year that such a ruling, which has now come to pass, would significantly water down the value of patents in Brazil so long as Brazil's IP office takes more than 10 years to prosecute them.

Managing IP will report on the outcome of the judge’s meeting on May 12 next week.

more from across site and ros bottom lb

More from across our site

Firms with a broad geographic reach are more likely to win work, especially from global companies with high turnovers, according to survey data of nearly 29,000 corporate counsel
IP STARS, Managing IP’s accreditation title, reveals its latest rankings for trademark work today, including which firms are on the up
The 2024 firm rankings for trademark disputes and protection work are now available on
Highlights from Sunday included judicial insight from across the globe and a keynote address from Martin Luther King Jr’s daughter
Managing IP’s senior reporter Rani Mehta interviewed attendees at the INTA Annual Meeting in Atlanta about how they made the most out of their first day
A team of lawyers who joined Norton Rose Fulbright from Polsinelli say they were drawn to the firm's global platform
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers say a ruling concerning liability for trademark infringement could give company directors an easy way out and create litigation uncertainty
The LMG Life Sciences Awards announces the winners for the 5th annual awards
Some US lawyers have strengthened their connections with European firms as they help clients determine whether the UPC will become a 'centre of gravity'
Gift this article