07/05/2021
The recent decision, and a further imminent decision, of the Brazilian Supreme Court on Patent Term has serious implications for patent holders in Brazil, especially in the Life Science and Pharmaceutical field.
Brazilian IP Law previously provided that the term of a patent is the longest of 20 years from filing date or 10 years from date of grant. This ensures a minimum term of ten years from the grant date; it can be thought of, effectively, as an automatic “Patent Term Adjustment” to account for delays in prosecution by the Brazilian Intellectual Property Office.
This “10 years from grant” term can be important for patentees because obtaining patent grant in Brazil can be a relatively slow process. It is particularly important in the Life Science/Pharma fields because there is no Patent Term Extension or Supplementary Protection Certificate in Brazil to provide the patentee with additional protection for a specific pharmaceutical product, beyond that of the term of the patent, to account for delays in obtaining marketing authorization for that product. I am aware of at least one patent in Brazil in the Life Science/Pharma field which presently has an expiry over six years after the “usual” patent term of twenty years from filing – this is more than equivalent to a Supplementary Protection Certificate. The implications for market share, royalty payments etc. are clear.
In April, the Brazilian Supreme Court suspended the relevant provision in respect of patents for pharmaceuticals because of the COVID-19 crisis. On 6th May 2021, the Brazilian Supreme Court ruled by a majority decision (9 to 2) that this 10-year patent term is not constitutional. As result, The Brazilian Patent Office will now only grant patents with a term of 20-years from their filing date. Thus, the effective Patent Term Adjustment to account for patent office delay is no more.
The Supreme Court will decide on 12th May 2021 whether patents already granted with a term of ten years from grant (of which we understand there are many thousands) will keep the 10-year term counted from date of grant. If not, many patents presently in force will have their term truncated; some cases, we understand, would immediately cease.
These decisions, especially the decision on 12th May 2021, will thus have immediate and serious implications for patentees, generics and licence holders, especially in the Life Science/Pharma fields. We will of course be watching developments with keen interest.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it
