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On April 7, the Brazilian Supreme Court (STF) will judge ADI 5529 (Direct Action of Unconstitutionality), which questions the extension of the validity of a patent as compensation for the delay of the INPI (National Institute of Industrial Property). Article 40 of the Industrial Property Law (Law 9.279 / 96) establishes, starting from the patent filing date, periods of 20 years for invention patents and 15 years for utility models. But, in practice, the time taken by the INPI to grant the patent is decisive for the time the inventor will enjoy it. For decades, the INPI 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 municipality an average of 11 years to approve a patent and in some sectors, such as electronic, up to 14 years. With the INPI project to eliminate the patent backlog in full swing, this term 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 INPI”, warns ABPI president, Luiz Edgard Montaury Pimenta.

While in Brazil the constitutionality of extending the term of a patent due to the delay in granting this right is being discussed, China is changing its legislation to introduce this compensatory provision. In June of this year, 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) extends 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.

ABPI – Brazilian Intellectual Property Association is amicus curiae in ADI 5529 and defends the maintenance of the sole paragraph of Art. 40. “Today the rule in force provides the sought after legal security to those who invest in innovation, research and development, generating patents ”, says Montaury Pimenta.

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