January 5, 2023
The 1st Panel of the Federal Supreme Court (STF) concluded, on December 16, 2022, the judgment of Constitutional Complaint #56,378, in which it was decided that the granting of a preliminary injunction to temporarily guarantee the validity of patents for a term longer than 20 years from the filing date (art. 40 of the Patent Statute) violates the decision of the full Court on Constitutional Challenge #5,529. The panel's decision not to endorse the preliminary injunction, which had been granted by Reporting Justice Luiz Fux, was given by a majority, with three opposing votes (divergent vote by Justice Dias Toffoli, accompanied by Justice Alexandre de Moraes and Justice Carmem Lucia) and with one Justice recusing himself (Justice Luis Roberto Barroso). Cases submitted to the STF, and other courts in Brazil, may be heard en banc or by smaller panels. The STF is formed by two panels of 5 Justices each, with its president voting only in cases heard en banc by all 11 Justices.
The mentioned Constitutional Complaint was filed by company Bristol Myers Squibb against a decision issued by Federal Appellate Judge Souza Prudente, of the 5th Panel of the Federal Court of Appeals for the First Circuit. He had rejected the request for preliminary injunction to suspend the act of the Brazilian Patent and Trademark Office (BRPTO) that reduced the term of validity of one of BMS's patents until the expert examination before the trial court was concluded.
The recent decision of the 1st Panel of the STF may impact the position of the judges of the First Circuit regarding the granting and maintenance of injunctions in lawsuits that seek to adjust patent terms, especially when considering that the request made by Bristol Myers Squibb is common for ongoing term adjustment lawsuits.
This scenario, however, may be balanced – or even reversed – in the event of a contrary judgment by the 2nd Panel of the STF in a similar Constitutional Complain (nº. 50,546), reported by Justice Ricardo Lewandowski, in which a monocratic decision was issued in the sense that a term adjustment via a lawsuit does not violate the decision of Constitutional Challenge nº. 5,529. So far, however, there is no forecast for the start of the judgment by the panel. If the positioning of Justice Lewandowski is confirmed, the issue may be taken to a final en banc hearing on the matter.