Client Alert

Patents granted with a reduced term of protection due to Supreme Court
(BRPTO’s gazette of April 13, 2021)

As the Licks Attorneys team previously advised, today, the BRPTO granted patents with a reduced term of protection due to the preliminary injunction (PI) granted by Reporting-Justice Toffoli on April 7.

Justice Toffoli partially granted a preliminary injunction to suspend the effect of the Sole Paragraph of Art. 40 of the Brazilian Industrial Property Statute for newly issued patents covering pharmaceutical products and processes and medical equipment and materials “for use in healthcare” granted after April 8. You can learn more about Reporting-Justice Toffoli PI in our client alert from April 12, 2021.

The BRPTO granted in its Official Gazette #2623 of today’s date 46 patents with a reduced term of protection, as the provision of the Sole Paragraph of Art. 40 of the Brazilian IP Statute was not applied to them, although they were eligible. According to the BRPTO’s communication, patents for pharmaceutical products and processes will be identified by the IPCs that comply with Art. 229-C of the Brazilian IP Statute and medical equipment and materials “for use in healthcare” will be determined by the subject matter claimed.

Patents granted under the challenged provision covering pharmaceutical products and processes and for equipment and materials “for use in healthcare” had their term of protection reduced by applying the general rule of Art. 40.

Patents granted on BRPTO’s gazette #2623 affected by Justice Toffoli decision

As shown in Annex I (below), Justice Toffoli’s decision reduced the term of protection for around 25% of affected patents by more than four or five years, i.e., their term of protection will expire within the next five years.

Among the 46 patents harmed by Justice Toffoli’s decision, seven belong to Brazilian applicants. Four patents are owned by Universidade Federal de Minas Gerais (UFMG) and one by Universidade Federal Fluminense (UFF).

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

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.

Annex I – Patents granted in BRPTO’s gazette of April 13, 2021, affected by Justice Toffoli’s decision

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