Tofoli Rejects Expanding Patent Term – 4/29/2021

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The Minister of the Supreme Federal Court (STF), Dias Tofoli, confirmed this Thursday, 29, his position is contrary to the rule that provides for an extension of the term of a patent granted by the National Institute of Industrial Property (INPI). Although the reading of his vote is expected to end next week, the minister has already guessed how he will position himself. Tofoli suggested expanding the effects of the decision and preventing an expansion forecast for all patents, and not just pharmaceuticals and equipment for use in health.

Under the current rule, invention patents, for example, last 20 years from the date of filing with INPI, or at least 10 years after the date of grant. That is, if the concession is delayed, the delay is compensated with more years of monopoly over the invention – which prevents reproduction or commercialization of the product over a certain period of time, in which the owner receives the so-called royalty.

If tofoli status is confirmed by ministers of the Supreme Court, in most cases, the benefit of the extension will no longer apply to requests for INPI after the court’s decision, without affecting the authorized patent. However, for pharmacists and devices for health use, the minister proposes that the extension of the deadline also ceases to apply for patents already granted. This retrospective effect will also apply to ongoing lawsuits discussing the constitutionality of this rule. According to information received from the institute, the patent in the pharmaceutical sector granted with the extension of time will be 3,400 at the end of this year, citing Tofoli.

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The final outcome of the lawsuit will depend on the position of the majority of the court, which will vote next week. Current law provides that an invention patent will have an extended period if it takes more than ten years to be approved by the INPI. For utility model conditions, the INPI may not take more than eight years.

However, this benefit was questioned in a suit filed by the Attorney General’s Office (PGR). The extension occurs when a patent is granted by INPI. In other words, once the granting of rights and the federal monarchy is delayed, it is defined that the patent will be valid for a further ten (in cases of invention) or seven years (utility model), to be counted by concession. .

During the session, Tofoli argued that the regular term of the patent already meets the requirements of the agreement on aspects of trade-related intellectual property rights (TRIPS) that are closed within the purview of the World Trade Organization (WTO). “It is also important to highlight that conservation is retrospective, acting as a restraint for competitors who are considering improperly exploiting the protected product during the process,” Tofoli said.

The minister argued that the extension provided in the law terminates, in practice, for patents. If the INPI analyzes the application within 10 years, protection is valid for 20 years (invention cases) from the date the application is made to the institution. But if INPI takes, for example, 15 years to issue a concession, the patent is valid for 25 years. “It depends on the time taken for each process,” the minister was quoted as saying.

“Patent duration will always be conditioned to an absolutely random variable. It creates an absurd scenario of having a patent in the country for a very long time period of 30 years”, said Tofoli, for whom the extension does not help. To solve the “chronic delays” of the processes presented to INPI.

“This ends up inducing noncompliance with the time limit provided in the capitol of the provision, as it reduces the consequences of administrative arrears and extends the period of privilege enjoyed by depositors,” Tofoli said .


The minister cited an audit by the Federal Audit Court (TCU), according to which INPI topped the list of five offices in the world with the longest delay in analyzing patents. The average waiting time in months until the first technical examination in Brazil is five times longer than in China and the United States.

According to TCU, in relation to pharmaceutical products and processes, between 2008 and 2014, almost all patent applications extended beyond 20 years. The Court of Auditors also reported that, although the number of patent filings in Brazil is much lower than those registered at other patent offices abroad, such as in China and the United States, its processing time is disproportionately long, On average, 10 INPIs took years to issue a final decision. According to Tofoli, TCU recommended the repeal of the extension rule.

To STF, INPI informed that it had 143,815 pending patent cases. Of this number, 94.1 thousand (65.46%) are in the technical examination phase, which is “apparently” the biggest bottleneck in the Tofoli municipality. “In pending applications, which have been waiting for a concession for more than 10 years in the case of the invention, or 8 years in the case of utility models, the total is not less than 8,837”, Tofoli said.

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Noting that INPI does not work with the maximum capacity of the server, the minister said that it is nonsense that a state agency whose task is to promote technological development and innovation in the country, performs its function without technical and personnel structure . As a result, Tofoli proposes a range of determinations for INPI, such as hiring civil servants to adequately prepare for “the agency’s great demand for staff”.

About the author: Sarah Gracie

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