Newsletter Edition 23 - March 2021


While Brazil questions, China extends the patent term

On April 7th, the Federal Supreme Court (STF) will judge ADI 5,529 (Direct Action of Unconstitutionality) on the sole paragraph of Art. 40 of the Industrial Property Law (Law 9,279/96), which provides for the extension of the term of a patent as compensation for the delay of the BPTO (Brazilian Patent and Trademark Office) in granting a patent. ABPI is amicus curiae in said action and defends the maintenance of the sole paragraph of Art. 40. “Today, the rule in force provides clearly and objectively the sought-after legal security to those who invest in innovation, research, and development, generating patents”, says the president of ABPI, Luiz Edgard Montaury Pimenta.

Montaury Pimenta points out that, while in Brazil the constitutionality of the extension of the term of a patent is discussed due to the delay in granting this right, China is changing its legislation to introduce this compensatory device. Next June, when the 4th Amendment to the Patent Law of that country will enter into force if a patent is not issued within three years from the examination request and four years from the filing the applicants may request the regulatory agency CNIPA (China National Intellectual Property Administration) to extend the term of the patent. The extension of the term is up to five years and applies to patents on chemical, biological, and traditional medicines.

The Industrial Property Law establishes 20 years periods for invention patents and 15 years for utility models, starting from the patent filing date. But in practice, the time that the BPTO will take to grant the patent is decisive for how much the inventor will benefit from it. For decades, the BPTO was one of the world record holders for the delay in granting a patent. While in other countries this term was around three to four years, it took the Brazilian institute an average of 11 years to approve a patent, and in some sectors, such as electronic, up to 14 years. With the BPTO project to eliminate the patent backlog in full swing, this period has already fallen considerably, but the future is always unknown. “This chronic problem may return if a future government fails to make the necessary investments in the BPTO”, warns ABPI’s president.