On May 6, 2021, the Federal Supreme Court – STF, sitting en banc, in judgment of Direct Action for Unconstitutionality (ADI) 5,529/DF (“ADI”), decided that the minimum validity term of patents, set forth in Art. 40, sole paragraph of the Industrial Property Law n. 9,279/1996 (“LPI”) is unconstitutional. 

According to Art. 40, main section, of the LPI, patents of invention remain valid for 20 years, while those protecting utility models remain in force for 15 years, in both cases counted from the filing date of the application. The sole paragraph of that article, in turn, establishes that the validity period of a patent of invention cannot be less than 10 years and 7 years for utility models, counted from the date of grant. 

In this scenario, if a patent application filed with the National Industrial Property Institute (INPI) takes  more than 10 years or 7 years (for patents of invention and utility models, respectively) to be granted, the validity period after grant could be extended to satisfy the minimum intervals set forth in the sole paragraph of Art. 40.   

However, according to the interpretation of the STF, the extension of the validity period of patents indicated in Art. 40 of the LPI is unconstitutional, for violating the principles of legal certainty, efficiency of the public administration, the economic system and the right to health. 

In a follow-on judgment, on May 12, 2021 the STF, again sitting en banc, decided to modulate the effects of the decision on unconstitutionality in the ADI in question, conferring ex nunc effects. i.e., as of the publication of that modulation decision (May 14, 2021). Therefore, the validity periods of patents granted according to Art. 40, sole paragraph, of the LPI and still in effect have not been affected. 

That modulation, however, is not applicable: (i) to patent applications at issue in lawsuits filed up to April 7, 2021 (date of granting a partial preliminary injunction in the ADI); and (ii) to patents covering pharmaceutical products and processes and equipment and/or materials used in health care whose validity period has been extended pursuant to Art. 40, sole paragraph, of the LPI. In these two cases, the declaration of unconstitutionality will operate with ex tunc effects, resulting in loss of the extensions, but respecting the general validity periods set forth in the main section of Art. 40.  

More information can be found at the website of the STF (https://portal.stf.jus.br/). The entire content of the en banc decision had not yet been published on the closing date of this edition of the Newsletter.