(BRPTO’s gazette of July 06, 2021)

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On May 12, 2021, the Supreme Court Justices, by majority, declared the Sole Paragraph of Article 40 of the Brazilian IP Statute unconstitutional with ex nunc effects.  This means that all utility patents granted with a 10-year term of protection from grant and all utility model patents granted with a 7-year term of protection before the publication of the final hearing minutes will remain valid, with two exceptions, for which retroactive effects will be applied (ex tunc):

• Patents with pending invalidity lawsuits grounded on the unconstitutionality of the Sole Paragraph of Article 40 and lodged until April 7, 2021; and
• Patents granted under the now unconstitutional Sole Paragraph covering pharmaceutical products and processes and equipment and materials “for use in healthcare”.

The BRPTO has already provided three lists:

• on May 18, 2021, the BRPTO provided a first list of patents officially affected by the Supreme Court decision (ADI #5529) in an official notice published in Official Gazette #2628. The list contained 3,341 pharma-related patents, which complied with Art. 229-C of the Brazilian IP Statute.
• on June 1, 2021, the BRPTO provided a second list of patents officially affected by the Supreme Court decision (ADI #5529) in an official notice published in Official Gazette #2630. Said list contained 2,114 patents related to medical technologies, according to the WIPO.
• on June 22, 2021, the BRPTO provided a third list of patents officially affected by the Supreme Court decision (ADI #5529) in an official notice published in Official Gazette #2633. This last list contained 97 patents classified under any of IPCs A61K/6, C12Q/1, G01N/33 and G16H.

The BRPTO has now provided a fourth list of patents officially affected by the Supreme Court decision (ADI #5529) in its Official Gazette #2635 from July 06, 2021. Said list contains 496 patents, which will also have their term of protection reduced or will be declared expired, if applicable.

As mentioned in our client alert from June 22, after the publication of the term of protection correction (under code #16.3) the patentee has a 60-day term to file a brief containing arguments and a request for the BRPTO to revise its act. If the arguments are accepted by the BRPTO, the term of protection will be restored to the original term of protection, established by the Sole Paragraph of Article 40 of the Brazilian IP Statute.

Additional lists of patents affected by the Supreme Court’s decision shall be provided in the forthcoming BRPTO Gazettes.

You can download a copy of the BRPTO’s original notice here. For additional information, please contact info@lickslegal.com.