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One rule for one, one for another – patent term of pharmaceutical patents truncated in Brazil


13th May 2021

The 12th May Decision of the Brazilian Supreme Court on Patent Term has serious implications for owners of pharmaceutical patents 

Following on from my recent Blog of 7th May, we are beginning to get preliminary reports of the Supreme Court’s Decision of 12th May 2021, concerning already-granted patents with a term of ten years from grant; in particular, whether these patents will retain this term. 

In short, our present understanding is that “pharmaceutical patents”, as well as patents subject to the relevant constitutional challenge before 8th April 2021, will have their term truncated.  They will not retain their 10-year term counted from date of grant, and will therefore, we understand, revert to a term of 20 years from filing date.  This appears to mean that some patents will immediately cease, although it seems there will be provisions to modulate this.  For example, we understand a patentee will not have to repay royalties already paid under a licence from a patent which had a “ten year from grant” term, but which now has the shorter “twenty years from filing date” term.  Similarly, we understand that a patentee will not be liable for damages due to any alleged restriction of access to the market in Brazil during a patent term which is now held unconstitutional. 

Our understanding is that other patents with a term of ten years from grant, such as patents in the telecoms and electronics field, will not have their term truncated.

If our understanding of these preliminary reports is correct, the application of the initial decision seems somewhat inconsistent.   The Brazilian patent office does have slow examination in all technical fields, and it seemed fair that the “ten year from grant” term applied to every patent – whatever the technology – which suffered delay in examination.   We know, of course, that the constitutional challenge was brought about because of the COVID-19 crisis. If the “ten year from grant” term is, in itself, unconstitutional, it is surely unconstitutional for all patents, not just “pharmaceutical patents”.   It therefore seems unfair that “pharmaceutical patents” are singled out in this way.  

Further, what is a “pharmaceutical patent”?    On the face of it, this means a patent claiming any drug for any purpose – even a drug completely unrelated to COVID-19 treatment.  If the Brazilian Supreme Court’s decision was related to COVID-19, then perhaps it should be more properly applied to patents in very specific related technologies.  What we understand of the present decision may lead to patentees arguing, for example, that their patent claims a specific (novel and inventive) substance for any use, and does not therefore represent a “pharmaceutical patent”.  Perhaps more relevant, how should this decision be applied to, for example, an already-granted patent related to a ventilator which could be directly involved in COVID-19 treatment?  This would not normally be considered a “pharmaceutical patent” – not by this writer at least.     

The written transcription and full written decision, which may shed more light on the interpretation, are not yet available.  We will of course be watching for these 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

Author
Phil Bates
Partner
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