If 2022 was the year when several Patent Term Adjustment actions were filed in response to the Supreme Court decision which abolished the minimum term of 10 years and 7 years for patents of invention and utility models, 2023 was the year to face the main developments and outcomes regarding the merits of such cases.
There are currently over 40 lawsuits requesting a PTA before the Brasília Federal Courts.
By Ana Paula Affonso Brito e Maria Eduarda Junqueira, partners at Montaury Pimenta, Machado & Vieira de Mello.
i) Patent Term Adjustment cases: the scenario after 2.5 years of the Supreme Court’s decision
If 2022 was the year when several Patent Term Adjustment (PTA) actions were filed in response to the Supreme Court’s ADI 5529 decision of May 2021, which abolished the minimum term of 10 years and 7 years for patents of invention and utility models, respectively, 2023 was the year to face the main developments and outcomes regarding the merits of such cases.
Although the so-called Patent Term Adjustments or Supplementary Protection Certificates (SPCs) are not regulated in Brazil, nor are subject to any legal formal provision, patentees claiming to be harmed by such new scenario have been filing lawsuits, in Brazil, requesting patent term adjustments based on the BRPTO’s unjustified delay in analyzing patent application(s), on a case-by-case basis.
There are currently over 40 lawsuits requesting a PTA before the Brasília Federal Courts, and most of them are supported by the same arguments: an excerpt from Hon. Justice Dias Toffoli’s (of the Brazilian Supreme Court) decision, quoting the PTA expression as an institute of other countries, which, in theory, would allow the extension of the patent validity term in Brazil as well.
Most of the already issued decisions concern preliminary injunctions requests that do not have the purpose of effectively extending the patent term definitively, but only suspending the patent expiry date provisionally, until a decision is made on the merits of the matter. Great part of such preliminary injunction requests have been denied in both instances, but few of them have been granted, though, keeping the patent valid until a decision on the merits is rendered.
While several lawsuits are still pending judgment, others have already had their merits analyzed by the Trial Court. Recently, some of the actions were dismissed by the trial Court and now the discussions are taking place on the Panel of Judges of the Federal District Court of Appeals.
In one of the referred lawsuits, the Justice has highlighted that:
“it would not [be] possible to infer from the STF ruling, nor from the individual votes of the justices who participated in the judgment, that there was room for modulation of the patent term based on the public administration's delay in analyzing patent applications. On the contrary, the decision was based on the principle of legal certainty, the temporality of the patent, seeking to bring predictability to patent terms and altering the validity term of a patent based on the delay in its analysis offends this principle, insofar as it changes the term provided for in the law based on grounds no longer provided for in the law since the judgment of ADI 5529.”[1]
Nevertheless, it should be noted that the First Panel of the Supreme Court has already had the opportunity to analyze two constitutional complaints (nº 56.378 and nº 53.181) related to the PTA lawsuits filed in Brasilia and decided that the request for adjustment of the patent term conflicts with what was decided in lawsuit ADI5529. Thus, it is quite possible that the injunctions currently in effect will be reverted by the Brasilia Court since the Supreme Court has already ruled on the matter in some decisions contrary to the adjustment of the patent term.
ii) The growth in the number of lawsuits involving IP matters and the Judiciary’s goals for 2024
According to the National Council of Justice, in 2022 31 million new lawsuits were filed in Brazil, in the various fields of law - a remarkable number in the history of the Brazilian Judiciary, totaling 81.4 million lawsuits pending a final decision on the merits.
Although the public survey with the 2023 results on the Judiciary has not yet been made available, this year’s experience shows that IP litigation cases certainly continue to be a trend, increasing steadily since the pandemic.
In the Federal Courts, the year 2023 brought the incorporation of the 12th Chamber of the Rio de Janeiro Federal Court as an additional one specialized in IP matters, alongside the other four existing specialized courts in this matter.
Since such incorporation in the 2nd half of 2023, a third of the caseload from certain established specialized courts was redistributed to the newly formed 12th Chamber to expedite case resolutions – reducing the number of cases that were already handled by the Judges from other Chambers and, consequently, helping to decrease the Court’s backlog on IP related disputes.
The President of the Brazilian Federal Court of Appeals for the 2nd Circuit emphasized the primary goals of this strategic initiative: (i) to advance the Court's specialization project, aligning it with its areas of expertise; (ii) to strive for a fair distribution of caseloads among federal judges, promoting a balance in procedural demands; (iii) to enhance the efficiency of judicial services, raising the quality and predictability of rulings; and (iv) to guarantee the attainment of the court's objectives, with a critical focus on upholding the constitutional principle of procedural speed.
The above statement seems to be well aligned with the National Council of Justice goals set for 2024. Among the 11 targets set by the president of the National Council of Justice and the Federal Supreme Court, Minister Luís Roberto Barroso, the following are particularly noteworthy when it comes to IP disputes, as, in theory, increase the Judiciary’s efficiency and reduce the Court backlogs:
-National Goal 1 – to judge more cases than are filed per year;
-National Goal 2 – to judge older cases in order to reduce backlog;
-National Goal 3 – to encourage conciliation between the parties, avoiding lawsuits within the ability to negotiate.
[1] Hon. Judge Leonardo Tavares Saraiva. Lawsuit # 1064209-43.2021.4.01.3400. March 10th, 2023.
El objetivo de Edna López como socia y directora del área de práctica de Propiedad Intelectual en la oficina en El Salvador es promover una cultura de trabajo colaborativo donde todos se respalden mutuamente.
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