Judgment by the Supreme Court of the Unconstitutionality Complaint No. 5529

Today, April 7, 2021, is a historical day for Brazilian Intellectual Property, due to the judgment by the Supreme Court of the Unconstitutionality Complaint No. 5529 regarding to constitutionality of the sole paragraph of article 40 of Law No. 9,279 from 1996 (Industrial Property Law).

Our partner, Leonardo Cordeiro, responsible for GPT’s patent team, comments that: “this provision was created with the objective of being an exception for the patent applications that surpassed the minimum validity period, of 20 years from the date of filing, however, due to the infrastructure of the BPTO, i.e., a governmental problem, the exception became the rule. Thus, it is risky to take a decision, which will end the validity of thousands of patents, due to a situation created by the BPTO. This decision must be taken very cautiously, since it affects all Brazilian technological areas and the discussion seems to be focused, specifically, in the pharmaceutical area, which is a very important area due to public health concerns. Nevertheless, the decision must not be taken thinking exclusively about this area.”

Additionally, attorney Pedro Matheus, also from GPT, adds that: “the decision that will be taken by the Court may have an impact beyond those patents granted by the BPTO in accordance with the rule of the sole paragraph of art. 40, and may have relevant economic repercussions to the country, due to the juridical insecurity of removing the provision, which has been valid for about 25 years, and possibly, driving away investments in innovation and technology in many productive sectors.” Moreover, he reinforces that “the eventual declaration of unconstitutionality of the provision does not solve the underlying problem, which is the BPTO’s delay in analyzing patent applications, merely transferring to the IP rights owners the burden for the BPTO’s delay.

Therefore, both Pedro and Leonardo conclude that the solution goes through optimizing the BPTO’s analysis, which is being done by the BPTO, by implementing projects to tackle the backlog, and would result in the gradual disuse of the sole paragraph of article 40.