Patents term adjustment undergoes a new hope

14 December 2022

A Constitutional Claim Action filed by Bristol-Myers Squibb (BMS) against the rejection of its preliminary injunction request to keep patent PI 0212726-1 in force had an interesting turn of events as Justice Luiz Fux gave a positive decision on the case. Such an Action allows a party to claim that a decision by an administrative body or the judiciary violated the jurisdiction or authority of decisions of a Supreme Court.

In this sense, Luiz Fux stated that the Supreme Court’s decision in the Direct Plea of Unconstitutionality 5,529 ruled in 2021 “does not prevent the Judiciary from authorizing the extension, for a determined and reasonable timeframe, of the patent privilege, should there be present, in the concrete case, circumstances which demonstrate unreasonable, unjustified, and exceptional delay of the Brazilian Patent and Trademark Office (BPTO) in granting the patent application”.

After quite a discussion in regard to the sole paragraph in article 40 of Brazil’s Industrial Property Law (Law no. 9.279/96) which allowed for an automatic adjustment for patents if the BPTO that took more than 10 years to grant a patent, the Brazilian Supreme Court decided it was unconstitucional as the automatic extension of patent terms brought forth an undue unpredictability as to when patent terms would expire.

Unsatisfied holders then brought complaints to the Judiciary in order to maintain their rights of the adjustment of their patent terms, none of which had yet a positive outcome. However, this last decision given by Justice Fux opens a door of hope by admitting the possibility of Courts to adjust patent terms in a case-by-case manner.

Judge Fux’s understanding even goes against another decision handed down by his workmate, Judge Toffoli, who understands that the granting of a preliminary injunction to extend the temporary privilege of the patent goes against the reasoning of the opinion from the Supreme Court in the ADI 5,529, as the Supreme Court affirmed the need of an objective criteria for eventual extension of the patent term, not related to the eventual delay in the prosecution of the patent.

While the subject still represents a blur to the holders, they can now cling to the emergence of this hope that admits the discussion of an adjustment of the terms of the patent under analysis on a case-by-case basis.