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BPTO publishes rules related to patent term as fixed by the Supreme Court

The Brazilian PTO published on May 18, 2021 a communication following the decision of the Brazilian Supreme Court (Direct Action of Unconstitutionality 5529), which extinguished the sole paragraph of Article 40 of the Brazilian IP Law, as well as attached a list of more than 3,000 patents that will have their patent term revised (link).

Such publication states that, from this date on, all patents granted will be valid for 20 years from the filing date, regardless of the technical field. The retroactive effect of the decision will be applied to patents related to pharmaceutical products and processes and to equipment and / or materials for use in health, which will undergo adjustments on their patent terms. The BPTO will publish:

• pharmaceutical patents that have not yet reached their “extra” term (i.e. still within the period of 20 years from filing): will be republished with adjustment on their term of validity to the limit of 20 years;

• pharmaceutical patents that have reached their “extra” term: will be republished with adjustment on their term of validity and extinguished.

The selection of these pharmaceutical patents will follow the criteria indicate below:

1. Patents sent for ANVISA’s analysis for the purpose of granting prior consent;

2. Patents with IPC classification A61B, A61C, A61D, A61F, A61G, A61H, A61J, A61L, A61M, A61N; H05G (technologies associated with medicine according to WIPO);

3. Patents with IPC classification A61K / 6, C12Q / 1, G01N / 33, G16H;

4. Patents with published lawsuit decision (code 19.1);

5. Granted Certificates of Addition.

Gusmão & Labrunie Advogados