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The constitutional challenge before the Brazilian Supreme Court (ADI 5529) that seeks to invalidate any remaining patent term of approximately 40% of Brazil’s patents and pending applications is scheduled to be decided on April 7, 2021 instead of May 2021.

The lawsuit challenging Article 40 of the Brazilian IP Statute was filed by the Federal Prosecutor’s Office (FPO) in 2016. Article 40 establishes a minimum term for patents of 10 years from the date of grant. Due to the backlog in examination of patent applications at the Brazilian Patent and Trademark Office, Article 40 is critical for many patent owners investing in Brazil affected by the backlog.

The Supreme Court is deciding this case earlier due to a request filed on February 24, 2021 by the FPO seeking a preliminary injunction (PI) to immediately suspend the effect of 10-year patent term.  The basis for the request was the impact of the 10-year patent term on pharmaceutical products and the supply of generic drugs to address the Covid-19 pandemic.

The FPO’s PI request was followed by several amici curiae filings.  On March 4, 2021, without deciding the PI request, Reporting Justice Toffoli requested that Supreme Court Chief Justice Luiz Fux move the oral hearing to a date earlier than May 2021.

As alluded to above, ADI 5529 has the potential to impact about 40% of all patents currently in force in Brazil. Approximately 25,119 utility patents and 1,907 utility model patents could have their term reduced, of which about 2,279 and 456, respectively, would immediately expire. Almost 14,000 pending patent applications are at risk of having with no patent term left when granted (10,049 utility patent applications and 3,631 utility model patent applications).

If the ADI 5529 is successful, the strategic industrial sector of the Brazilian economy will be severely affected. For example, about 88.32% of telecommunications utility patents could have their patent term reduced or invalidated. A similar outcome might result for about 67.66% of biotech patents, about 66.67% of pharmaceutical patents, about 59.94% of electronic patents, etc.

Brazilian patentees will also these effects if ADI 5529 is successful.  Specifically, about 36.52% of Brazilian owned utility and utility model patent currently in force may immediately become expired.  Among the top 15 Brazilian patentees are important research institutions, universities, and public companies such as FAPESP, UNICAMP, EMBRAPA, UFRJ, USP and PETROBRAS. The impact on these institutions could undermine Brazil’s capability to foster innovation.

Licks Attorneys has prepared a special publication with information about the potential impact that ADI 5529 might have, if successful, on the Brazilian patent system, patent owners, investments, manufacturing, and value-added chains that rely on patents in Brazil.  This material is available at Licks’ website.

Please continue to watch BRICS & Beyond for updates on ADI 5529.

This post was written by Lisa Mueller and by Rob Rodrigues, Otto Licks, Ana Calil, and Alysson Farias from Licks Attorneys


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