How to protect the rights of the holder of an essential patent while guaranteeing free competition and social interest? There is no easy legal solution to this issue, not contemplated in the Industrial Property Law (Law 9,279/96), concluded this Monday, 06, the participants of the first debate on “Contemporary Issues of Intellectual Property Law”, event in partnership between ABPI (Brazilian Association of Intellectual Property) and EMERJ (School of Magistrates of the State of Rio de Janeiro), from June 6 to 10. “There is only one certainty: the essential patent needs special treatment”, said Gabriel Leonardos, from ABPI.”The controversy is hot, interesting and difficult”, pointed out judge Cláudia Telles de Menezes of the 5th Civil Chamber TJ-RJ. “The courts are facing a difficult task, as there is little national doctrine and jurisprudence reference” , added Professor Enzo Baiocchi, from UFRJ.

In his speech, Montaury Pimenta – workshop coordinator alongside EMERJ director general, judge Cristina Tereza Gaulia – highlighted the relevance of the discussion on essential patents at a time when Brazil is incorporating 5G technology, which will be adopted by cellular operators. And he also recalled that, precisely in the telecommunications area, where the largest stock of patent examinations pending at the INPI resides, the well-known patent backlog, many are stillborn. In other words, the applicant for these patents has complied with all of its obligations, such as the payment of fees and annuities and, due to the excessive delay in the examination, the patent is granted after its validity period has expired. “ABPI filed a structuring public action in the federal court in order to enable the INPI to manage the funds it collects, thus being able to hire examiners, technology and equipment to help overcome this historical and unacceptable problem of the patent backlog”, said the president of the ABPI.

Leonardos, in turn, cited the opinions of jurists José Carlos Vaz e Dias and Heloísa Carpena Amorim on the essential patent and pointed out open issues on the subject, such as the lack of standardization by international certifying bodies, the prohibitive cost of calculating the patents associated with the invention, the basis of calculation and royalties for the value of the license and the difficulty of conceptualizing the FRAND license in Brazil (fair, reasonable, and non-discriminatory terms“), licensing under conditions that allow the entire industry to enjoy the standard technology. “Is it reasonable for the basis for calculating the license fee to be the value of the product? Or should we only consider the part of the product where the patent technology is applied?”, he asked.

For the judge Cláudia Telles de Menezes, in the essential patent it is “very tenuous” to find a balance between intellectual property rights and the public interest. “We in the judiciary have to be very careful with this issue,” he said. “We have a lot of discussions about infringements of these essential patents and a lot of injunctions prohibiting or authorizing their use,” he explained. Professor Baiocchi, in his speech, also considered it difficult to reconcile the interests of the private owner, competitors and society in the Law. “What we are looking for is a fair balance, a peaceful solution, lasting social peace,” he said. “And who will ensure this balance is the State, especially the Judiciary.”

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