Even though significant progress has been made recently, the problem of delay in the Brazilian PTO in relation to patent proceedings is well known, a fact that is attested to by the numerous cases being taken against the body.

Until April 2021, patentees could rely on the fact that the potential negative impacts of these delays would be remedied by the 10-years-from-grant minimum term rule, applied whenever the PTO took more than 10 years to decide a case. However, the Brazilian patent landscape changed after the Brazilian Supreme Court (STF) decided in a 9 x 2 judgment that such a minimum term rule would be unconstitutional.

Since the STF decided that pharmaceutical patents would have their terms retroactively reduced from 10 years from grant to 20 years from filing, term extensions are being sought in the courts by several pharma companies, precisely with the aim to remedy the argued harm caused by such unjustified delays at the patent office.

Justice Luiz Fux of the STF recently highlighted this issue in a decision of November 16 (complaint no. 56.378). In his ruling, Justice Fux pointed to the need for efficient mechanisms to guarantee the adjustment of patent terms to applicants harmed by the unjustified delay of the BPTO and ordered the lower court to reassess this issue as the patentee’s original injunctive relief request for a provisional PTA had been rejected. This decision still has to be confirmed (or revoked) by a panel composed of 5 Justices, which might be concluded by December 16 – so long as none of the justices request to halt the trial for an in-depth study of the case.

While the discussion goes on, some patentees requested preliminary injunctive relief to revive or prevent patents from expiring. Currently, there are four injunctions granting provisional PTA in force. In case Justice Fux’s opinion prevails, more decisions granting PTA are likely be rendered by lower courts.

If you have any inquiry about PTA litigation in Brazil, our team is available to provide you with further information on the topic.