{"id":809,"date":"2021-05-17T09:20:06","date_gmt":"2021-05-17T12:20:06","guid":{"rendered":"https:\/\/leao.adv.br\/?p=809"},"modified":"2021-05-17T09:20:06","modified_gmt":"2021-05-17T12:20:06","slug":"limitacao-prazo-de-patentes","status":"publish","type":"post","link":"https:\/\/leao.adv.br\/en\/limitacao-prazo-de-patentes\/","title":{"rendered":"Understand the effects of the constitutional limitation of the patent term judged by the Supreme Court on May 12, 2021: 20 years from the filing date"},"content":{"rendered":"

Last week, the historic judgment of the Brazilian Supreme Court - STF, which lasted four weeks, concluded by the unconstitutionality of the sole paragraph of article 40 of the Industrial Property Law no. 9279\/96.<\/p>\n

The single paragraph recognized as unconstitutional by the STF defined that if there was a delay in the judgment by the INPI referring to patent applications for invention and utility model patent applications, a minimum of 10 years and 7 years, respectively, of the concession term would be counted.<\/p>\n

With the declaration of unconstitutionality, no patent may have its validity counted from the date of the concession, and all decisions of INPI's concession hereafter must comply with the term established in the caput of art. 40 of said Law.<\/p>\n

However, as there are doubts about the existing cases and specific technological areas due to the modulation of effects made by the STF, we reproduce below the main points contained in the vote of Minister Dias Toffoli who didactically explains the limits and scope of the historic decision of the Supreme Court (pages 14 and 15 of the vote of the Minister on the Modulation of Effects proposed on 12\/05\/2021 and accepted by the majority of Ministers):<\/p>\n

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  1. a) Patents already granted with the application of the sole paragraph of art. 40 of the LPI when there is an ongoing legal action (filed until April 7, 2021) that has as its object the constitutionality of the sole paragraph of art. 40 of the LPI:<\/li>\n<\/ol>\n

    WITHOUT MODULATION (RETROACTIVE EFFECTS - EX TUNC) <\/strong> Regardless of the technological sector, patents lose the additional period that would follow from the sole paragraph of art. 40 of the LPI. They now have a validity period of 20 years, in the case of invention, and 15 years, in the case of a utility model, counted from the filing date (caput of art. 40).<\/p>\n

      \n
    1. b) Patents already granted with the application of the sole paragraph of art. 40 of LPI when it comes to pharmaceutical products and processes and equipment and\/or materials in health use:<\/li>\n<\/ol>\n

      WITHOUT MODULATION (RETROACTIVE EFFECTS - EX TUNC) <\/strong> Approx. 3,435 (11.21%) miss the additional period that would result from the sole paragraph of art. 40 of the LPI. They now have a validity period of 20 years, in the case of invention, and 15 years, in the case of a utility model, counted from the filing date (caput of art. 40). Any concrete effects already produced as a result of the validity of patents with an extended term are protected.<\/p>\n

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      1. c) All other patents already granted with the application of the sole paragraph of art. 40 of the LPI, which do not focus on items \u201ca\u201d or \u201cb\u201d:<\/li>\n<\/ol>\n

        WITH MODULATION (PROSPECTIVE EFFECTS - EX NUNC) <\/strong> Approx. 27,213 (88.79%) remain with the extended term due to the application of the sole paragraph of art. 40 of the LPI, due to the modulation.<\/p>\n

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        1. d) Patent applications already filed and still pending at the INPI:<\/li>\n<\/ol>\n

          IMMEDIATE EFFECT OF THE STATEMENT OF UNCONSTITUTIONALITY (NON-INCIDENCE OF THE SOLE PARAGRAPH OF ART. 40 OF THE LPI) <\/strong> Regardless of the length of the process, they will no longer be able to enjoy, in the future, the extension of the term resulting from the paragraph only of art. 40. The patent will remain in effect for the periods provided for in the caput of art. 40. The ex nunc effect mentioned in item 14 \u201cc\u201d only protects the extensions of deadlines granted before the declaration of unconstitutionality.<\/p>\n

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          1. e) New patent applications filed after the declaration of unconstitutionality:<\/li>\n<\/ol>\n

            IMMEDIATE EFFECT OF THE STATEMENT OF UNCONSTITUTIONALITY (NON-INCIDENCE OF THE SOLE PARAGRAPH OF ART. 40 OF THE LPI) <\/strong> They will no longer be able to enjoy, in the future, the extension of the term resulting from the sole paragraph of art. 40. The patent will remain in effect for the periods provided for in the caput of art. 40.<\/p>\n

            Le\u00e3o Intellectual Property is at your disposal to clarify any doubts or questions about the recent decision of the Supreme Court, reaffirming that it is a specific decision and a historical landmark of the Brazilian Federal Supreme Court in resuming the judgment of cases involving intellectual property rights, reaffirming the its economic and social relevance for national sustainable development. E-mail: leao@leao.adv.br <\/a>.<\/p>","protected":false},"excerpt":{"rendered":"

            Na semana passada foi finalizado o julgamento hist\u00f3rico do Supremo Tribunal Federal \u2013 STF que durou quatro semanas e concluiu pela inconstitucionalidade do par\u00e1grafo \u00fanico do artigo 40 da Lei da Propriedade Industrial n. 9279\/96. O par\u00e1grafo \u00fanico reconhecido como inconstitucional pelo STF definia que caso houvesse atraso no julgamento pelo INPI referente aos pedidos […]<\/p>\n","protected":false},"author":4,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[1],"tags":[],"class_list":["post-809","post","type-post","status-publish","format-standard","hentry","category-leao-news"],"acf":[],"_links":{"self":[{"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/posts\/809","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/users\/4"}],"replies":[{"embeddable":true,"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/comments?post=809"}],"version-history":[{"count":2,"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/posts\/809\/revisions"}],"predecessor-version":[{"id":811,"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/posts\/809\/revisions\/811"}],"wp:attachment":[{"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/media?parent=809"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/categories?post=809"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/leao.adv.br\/en\/wp-json\/wp\/v2\/tags?post=809"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}