The term of patent protection in Brazil is 20 years from the date of filing. However, this period cannot be less than 10 years from the date of grant. If a patent application is granted 12 years after filing, its term of protection will be 22 years. This mechanism was introduced in 1996 to compensate for the Brazilian INPI’s delay in examining patent applications. A decision by the Brazilian Supreme Court on May 12, 2021 modifies this rule endemic to the Brazilian territory.
Indeed, the constitutionality of this legal provision has been the subject of discussion before the Court for over 5 years (Unconstitutionality Direct Actionno. 5529 implemented in 2016). The Court ruled that granting a term of protection of 10 years from patent grant violated several constitutional principles (e.g., free competition; equal treatment and legal certainty), and therefore repealed this provision. As a result, from the effective date of this decision, all patents granted by the Brazilian INPI will have a protection period of 20 years from the date on which the application was filed with the INPI, regardless of the field of technology and the duration of the procedure.
Patents already granted on this date will not be affected by these measures, and will retain their initial term as granted by INPI (20 years from the date of filing or 10 years from the date of grant), with the exception of :
- pharmaceutical and medical patents, the duration of which will be reviewed retroactively to comply with the 20-year filing deadline,
- patents whose term of protection is challenged before May 14, 2021,
which will have a validity period of 20 years from the date of filing of the patent application, regardless of the date of grant, even if this is more than 10 years after filing.
In these two exceptions, the rights generated by the 10-year term from grant will be preserved, as in the case of a license agreement which takes into account the 10-year term from grant as the term of the patent covered by the agreement.
This decision echoes the measures taken by the Brazilian INPI to reduce the length of the grant procedure (known as the “backlog”), which was historically high and very often exceeded 10 years. Thanks to the efforts of the INPI, this backlog is now being rapidly reduced, reducing at the same time the application of this rule of Brazilian law. You can find our article on the measures taken by the Brazilian office to combat the backlog here.
Given that patent term adjustment is no longer an issue in Brazil, we can only suggest that Brazilian patent applicants review their patent portfolios to check which cases are affected by the aforementioned Supreme Court decision, as well as to check which pending applications could be subject to the various existing priority examination paths (Fast-Track).
