STJ decides that the term of validity of a patent granted by the mailbox system is 20 years

STJ decides that the term of validity of a patent granted by the mailbox system is 20 years

In a recent judgment, the Second Section of the Superior Court of Justice (STJ), in terms of repetitive resources, defined that the term of validity of a patent granted by the mailbox system is 20 years.

According to the opinion of Minister Nancy Andrighi, who presented the winning thesis in the repetitive trial, the term provided for in the sole paragraph of article 40 of the Industrial Property Law (LPI), do not apply to patents deposited in the manner stipulated by article 229, sole paragraph, of the said law.

 

 

In a certain part of the vote, the rapporteur stated:

In the case of patents exceptionally deposited by the mailbox system, the LPI, in its final and transitory provisions (article 229, sole paragraph), established an express rule ensuring protection limited only to a period of 20 years (or 15, for utility models) counted from the day of deposit (as stipulated by the aforementioned article 40, caput)”

The decision will reflect on the reduction of the patent’s right time.

—

Author: Sheila de Souza Rodrigues, Senior Associate at Peduti Advogados.

Source: Prazo de vigência de patentes mailbox é de 20 anos contados da data do depósito do pedido pelo interessado

—

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

Unconstitutionality of the sole paragraph in article 40 of the Brazilian IP Law

Unconstitutionality of the sole paragraph in article 40 of the Brazilian IP Law

Amid the global pandemic, the Brazilian Supreme Court’s (STF) judgment is very much expected about action for the declaration of unconstitutionality (ADI 5529) of paragraph of article 40 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”) filed by Attorney General of the Republic.

In short, the lawsuit seeks to force discussion about the validity of a patent counted from its grant date by BPTO.

According to the rule laid down in article 40, sole paragraph, of the IP Law:

“Article 40 – The term of a patent for an invention shall be 20 (twenty) years and for a utility model 15 (fifteen) years as from the filing date.

Unconstitutionality of the sole paragraph in article 40 of the Brazilian IP Law

Sole Paragraph – The term shall not be less than 10 (ten) years for inventions and 7 (seven) years for utility models, as from the date of grant, except where INPI is prevented from carrying out the substantive examination of the application due to pending litigation or for reasons beyond its control.”

However, there is divided opinion regarding unconstitutional of paragraph of article 40 to the Brazilian Industrial Property Law among jurists and technology development enthusiasts.

While some argue that the declaration that the article is unconstitutional will be detrimental to various sectors of innovation and technology, mainly because the period of exclusivity warranted to the owner is one of the pillars of the patent system, others maintain that the rule violates devices of procedural celerity on the Brazilian Public Administration and disobeys different constitutional principles, such as freedom of competition and consumer protection, because the rule creates an indefinite term for patents and utility models.

—

Lawyer Author of the Comment: Sheila de Souza Rodrigues

Source: Global NGO asks govts to support India’s ‘landmark’ proposal seeking IP waiver on Covid-19 drugs

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”