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Yesterday, more patents were granted with a reduced term of protection due to the preliminary injunction (PI) granted by Reporting-Justice Toffoli on April 7. You can learn more about Reporting-Justice Toffoli PI in our client alert from April 12, 2021.

In its Official Gazette #2624 of yesterday’s date, the BRPTO granted an additional 38 patents with a reduced term of protection, as the provision in the Sole Paragraph of Art. 40 of the Brazilian IP Statute was not applied to them, although they were eligible. Those 38 patents sum up to the 46 patents granted with a reduced term of protection in Official Gazette #2623.

Further explanation on the methodology the BRPTO will apply to identify the patents covering pharmaceutical products and processes and for equipment and materials “for use in healthcare” has been provided in an official communication published in the Official Gazette #2624. According to it, the following groups will have their term of protection reduced by applying the general rule of Art. 40:

• Pharmaceutical products and processes will be identified by the IPCs that comply with Art. 229-C of the Brazilian IP Statute
• Medical equipment and materials for use in healthcare will be determined as follows:
  - Applications related to medical technologies, having at least one of the following IPCs: A61B, A61C, A61D, A61F, A61G, A61H, A61J, A61L, A61M, A61N, or H05G, in any position.
  - Applications “for use in healthcare” having at least one of the following IPCs: A61K 6/00, C12Q, G01N 33.
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Patents granted on BRPTO’s gazettes #2623 and #2624 affected by Justice Toffoli decision

Among the patents granted in BRPTO’s Official Gazette #2624 is PI 9914508-1, which has been granted albeit already expired. Although the BRPTO took almost 22 years to grant this patent, the BRPTO reduced its term of protection in this 11 years and six months and set its expiration date as October 13, 2019.  Annex I (below) shows the patents granted with a reduced term of protection due to Justice Toffoli’s decision.

Number of patents affected by Justice Toffoli’s decision, per patentee’s country

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Licks Attorneys is actively engaged in all aspects of the case before the Supreme Court, with four partners scheduled to present oral arguments during the April 14, en banc hearing session. The firm represents associations covering a broad spectrum of patent owners in different arts. The latest developments concerning the case can be found on the firm’s specially developed website: https://www.lickslegal.com/information-about-the-brazilian-patent-system.

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

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Annex I – Patents granted on BRPTO’s gazette #2623 and #2624 affected by Justice Toffoli’s decision

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