Newsletter Edition 22 - February 2021


STF judgment calls into question the effectiveness of the patent system and brings to light the financial autonomy of the BPTO

ABPI – the Brazilian Intellectual Property Association is supported by the letter of the law and the principle of legal certainty to justify the maintenance of the sole paragraph of Article 40 of the Industrial Property Law (Law 9,269/96) whose constitutionality will be judged by the STF (Federal Supreme Court) on May 26th, through ADI 5,529 (Direct Action of Unconstitutionality). The legal provision foresees an extension of the term of invention patents and utility models due to the BPTO’s (Brazilian Patent and Trademark Office) delay in granting a patent.

In fact, the effectiveness of the BPTO is being judged in this Action. Article 40 of the Law establishes periods of 20 years for invention patents and 15 years for utility models counting from the patent filing date. Thus, in practice, the time taken by the BPTO to grant the patent is decisive concerning the time the inventor will benefit from it. The problem is that, for decades, the BPTO was one of the world record holders in the delay in granting patents. Until recently the period took an average of 11 years, and in some sectors, such as electronics, the wait reached the 14-year mark – considering that in other countries this period is around three to four years.

The results obtained so far by the BPTO’s Fight against Backlog Plan — which in less than two years has already halved the stock of 150,000 patents pending examination — are promising, and the time for granting a patent is gradually being reduced. But who can guarantee that this situation will remain? What is the security of the company, of the innovative agent, that its patent will not rest in the drawers of the BPTO in a new government cycle? Are the elimination of the backlog and the virtual reduction of the patent granting period sustainable? These are matters for the STF ministers to judge. “Today’s current rule clearly and objectively provides the sought after legal certainty to those who invest in innovation, research, and development, generating patents”, says ABPI’s President Luiz Edgard Montaury Pimenta.

There is also the argument that, in the case of medicines, extending the patent term would prolong society’s lack of access to health, but for ABPI this is not supported either. However, only 7.8% of the total patents at the BPTO (pending and granted) are pharmaceutical. In other words, 92.2% are depositors who want to receive protection as soon as possible – the main example is the telecommunications area, the most backward of all, where innovation is very fast and the need for exclusivity is immediate. “Innovation in all technological areas cannot be harmed by a single sector”, says the President of ABPI.

For ABPI, the guarantee of the efficiency of the BPTO, which would justify the extinction of the Sole Paragraph of Article 40, is the financial autonomy of the institute, a longstanding banner of the association, which represents a large part of the holders of trademarks and patents. As an institute linked to the government, the BPTO does not have power over its budget and decisions to invest in technological infrastructure, among other limitations. Money would be no problem. Currently, only a quarter of the BPTO revenues – an annual collection of more than R$ 500 million — is assigned to the institute, a situation that has been lingering for decades.