3.1.6 Patent term and expiration
Invention patents have a term of 20 years, and utility model patents have a term of 15 years from the date of filing (Article 49 of the LPI).
According to this legal provision, if the INPI took more than 10 years to grant a patent, this time would be included to the term of the patent.
In 2015, the average time for administrative processing was 11 years or, in certain technological areas, 14 years.13 The INPI engaged in a plan to combat the backlog, which led to a reduction in the average time to grant a patent to approximately eight years.14
Article 40 of the LPI previously provided a minimum term of ten years for invention patents and of seven years for utility model patents. This was to ensure that patents were in force for a reasonable term, and avoid granting patents close to expiration of their term. In other countries (e.g., Australia, China, the Republic of Korea and the United States), where patents are granted in less than four years on average,15 patent holders enjoy more than 16 years of market exclusivity.
The constitutionality of the provision that ensures a minimum term for patents is not only to ensure for the private sector but also for publicly held companies and universities to exploit their patents. However, recently, the Federal Supreme Court (Supremo Tribunal Federal; STF) declared the aforementioned provision unconstitutional when it decided on Direct Action of Unconstitutionality (ADI) No. 5,529/DF.16 The decision is valid for any and all categories of inventions, encompassing both applications already filed and awaiting a resolution from the INPI and new applications. On May 12, 2021, modulating the effects of the previous week’s decision, the STF, en banc, decided that patents that had already been granted for pharmaceutical products and processes and equipment or materials for health-care use no longer had the extended term provided for in Article 40(1) of the LPI. However, the declaration of unconstitutionality of the provision does not reach other patents already granted and still in force as a result of the extension of the term and becomes effective from the publication of the minutes of the trial of ADI No. 5,529. Article 40 (1) was further revoked by the Law no. 14.195, promulgated on August 26, 2021.
A patent is granted after the application is approved and the payment of the corresponding fee is proven, with the issuance of the respective letters patent (Article 38 of the LPI). The payment of the fee and respective evidence of payment must be made within 60 days of the granting date (Article 38(1) of the LPI). A patent is deemed granted on the date of publication of the respective act (Article 38(3) of the LPI). The letters patent must contain the number, title and nature of the patent; the name of the inventor; the holder’s identification and address; the term of validity; the specifications; the claims; the drawings; and the data relating to priority (Article 39 of the LPI).
A patent is valid only in the countries in which it has been applied for and granted protection. Each country is sovereign to grant a patent or not, regardless of the decision in other countries on corresponding patent applications filed there (Article 4bis of the Paris Convention).