Court of Appeal´s decision on mailbox patents
On April 28, 2015, a Court Decision by the Federal Court of Appeals of Rio de Janeiro limited the term of three mailbox patents to 20 years from their filing dates, instead of 10 years from grant. Mailbox patents are those patents relating to pharmaceutical and agrochemical products, which were filed in Brazil between January 1, 1995 and May 14, 1997.
Before January 1, 1995, when the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement was adopted, patents covering pharmaceutical and agrochemical products were not allowed in Brazil. Therefore, when Brazil agreed to adopt the TIPS Agreement, it was granted a transitional period in order to enact new laws that were TRIPS compliant.
On May 15, 1996, Brazil enacted a new Industrial Property Law (Law N° 9.279), with full provisions that went into effect on May 14, 1997. The new IP Law established mailbox patents related to any pharmaceutical and agrochemical products filed between January 1, 1995, and May 14, 1997.
According to the provisions of article 40 of the Brazilian IP law, a mailbox patent can be protected for a minimum of 20 years from its filing date and at least 10 years after the grant date. Therefore, mailbox patents were granted according to said article and in practice the two different terms are very relevant considering the existing backlog for examination and grant of these type of patents in Brazil.
However, the term of a mailbox patent is set forth in the sole paragraph of Article 229 of the IP Law, which establishes that said patents have a limited term of 20 years from filing. Thus in 2013, INPI filed several lawsuits for nullity of all mailbox patents (almost 250) in the Federal Court in Rio de Janeiro.
The fact that three of these lawsuits have been recently accepted by the Court highlights a more restrictive approach of Brazilian judges regarding patent protection, in line with INPI´s criteria.