After judgment of the DPC 5529, the Federal Supreme Court decided that the provision of the Sole Paragraph of Article 40 of the Brazilian Patent Law, according to which patents of invention and utility model should be in force respectively for at least 10 and 7 years after granting, breaches the Brazilian Constitution.
The Federal Supreme Court has also established about the modulation of effects of this decision, which will retroact:
1) For patents related to pharmaceutical products and processes and equipment and/or materials for health use that are in force and have a term of protection of 10 or 7 years counted as from their granting; and
2) For patents, in all technological areas, being challenged in lawsuits filed until April 7, 2021.
By means of publication made in the Official Gazette (O.G.) No. 2633, of June 22, 2021, the Brazilian PTO communicated that, as of the publication of the adjustment of the patent protection term (decision code 16.3), the patent holder will have 60 days to request a review of the BPTO’s act.
This opportunity was provided since, in specific cases, the applicability of the DPC 5529 decision from the BPTO side, based at the moment exclusively on international classifications and ANVISA’s prior consent, could impact patents whose subject matter would not be exclusively related to pharmaceutical products and processes and equipment and/or materials for health use.
If there is interest in questioning the adjustment of a patent term, the holder must submit a petition to the BPTO, clarifying the reasons why such adjustment should not have occurred. The presented clarifications will be analyzed and, if considered pertinent, the patent term will be readjusted to the original term. If the clarifications are not considered pertinent the reduction of the patent term will be maintained and the rejection of the request will be notified in the Official Gazette. Appeals will still be available after this administrative act.