Read the full article published in O Globo today (07).
By Luiz Edgard Montaury Pimenta
On this Wednesday in which the Supreme Court addresses Direct Unconstitutionality Action No. 5,529 – which questions the constitutionality of the sole paragraph of Article 40 of Law 9,279 / 96 (Industrial Property Law – LPI) – which is in question, in fact, it is the legal security of the Brazilian patent system and the future of the country’s technological development.
The main argument made in ADI No. 5,529 is that the sole paragraph of Article 40 of the LPI would leave the patent term undetermined, affecting alleged third party rights. This thesis simply disregards the need for temporary protection of the inventor under the terms established in Article 5, item XXIX of the Federal Constitution, which, through the aforementioned legal provision, guarantees a minimum period of validity of the patent to compensate the losses caused by the INPI backlog – the inventory of patent applications pending examination.
It follows that art. 40 of the law establishes, starting from the patent filing date, deadlines of 20 years for invention patents and 15 years for utility models. This means that, in practice, the time taken by the INPI to grant the patent will determine the time that the inventor will enjoy this right. The problem is that, for decades, the INPI was one of the world record holders in the delay in granting patents. Until recently, this time took an average of 11 years, and in some sectors, such as electronics, the wait reached the 14-year mark – this considering that in other countries this period revolves around three to four years. Although today the term for granting a patent has been reduced, it is still time consuming in view of the time that this examination takes in other countries, and there is no guarantee that this excessive delay may one day return.
It should also be noted that, when including the sole paragraph of art. 40, legislators chose to connect the legislation to the Trade Related Intellectual Property Rights Agreement (“TRIPS”) Agreement, promulgated by Decree No. 1355/1994, notably Articles 33 and 62. The thesis of ADI, therefore, turns a blind eye to the commitments made by Brazil in international treaties.
The argument of the national pharmaceutical industry of generics that, in the case of medicines, the extension of the patent term would prolong society’s lack of access to health cannot be supported. However, only 7.8% of the total patents at the INPI (pending and granted) are pharmaceutical.
Patents in the chemical, electrical, mechanical, metallurgical, textile, oil, mining, biotechnology sector applicable to agribusiness and civil engineering have also been granted during these years of full LPI validity, based on the 10-year legal rule of its concession , pursuant to the sole paragraph of article 40 of the LPI. These extremely relevant sectors of the economy deserve the guarantee of the protection provided by the legal provision in question and the safeguard of other constitutional principles, such as acquired law and legal certainty.
The eventual declaration of unconstitutionality would greatly affect Brazilian companies, such as Petrobras, Vale, Embraer, Natura, Tigre, Klabin, which together hold approximately 60 patents that would fall within the term of art. 40, single paragraph. Likewise, public universities, such as the University of São Paulo (USP), with more than 180 patents and 40 applications, and even state-owned companies, which represented 24% of the depositors of national patents in 2017, may be affected.
The guarantee of a minimum term of protection is the constitutionally correct result to foster interest in research and, at the same time, reward the effort and investment of the inventor, maintaining the virtuous cycle of incentive to invention for the progress of the whole society. Unduly limiting industrial property rights means promoting retrogression, discouraging entrepreneurship and discouraging domestic and foreign investments in the country.
* President of the Brazilian Intellectual Property Association
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