Brazil Federal Court Of Appeals For The Second Circuit Rules That Mailbox Patents Can Only Be Granted With The Validity Date Of 20 Years From Filing

The Brazil Federal Court of Appeals for the Second Circuit held a hearing for the 1st Specialized Panel to rule on the Repetitive Demands Resolution Incident regarding the validity date for mailbox patents.

Mailbox patents are pharmaceutical and agrochemical patents that were filed under a special regime in Brazil between its adherence to the TRIPs Agreement (Trade-Related Aspects of Intellectual Property Rights) in 1994 and the issuing of the Brazilian IP Statute. The reason for this special regime was that, prior to the TRIPs Agreement, pharmaceutical and agrochemical inventions were not allowed to be patented in Brazil - which would need to change in consideration of the TRIPs.

Article 70.8(b) of the Agreement established that from January 1, 1995 all of the signatory members would need to apply the same criteria of patentability to pharmaceutical and agrochemical patent applications that was required to other applications. In this sense, it was established a procedure in which the Brazilian Patent and Trademark Office ("BPTO") would receive such patent applications, especially in order for Applicants to save their priority dates, but they would only be analyzed under the law of the new IP Statute, which was still unpublished. However it is worth mentioning, despite this special regime, these patents that became known as "mailbox" patents were not extraordinary patents (different from BTO's understandings), as established by TRIPs.

The new IP Statute was issued on May 14, 1996 and came into force on May 14, 1997. Articles 229 and 229-B, respectively, established that (i) pharmaceutical and agrochemical patents filed between January 1, 1995 and May 14, 1997 would be examined under the same patentability standards established in said law, with the validity date limited to the main section of article 40 of the IP Statute and (ii) that these patent applications would need to be decided by December 31, 2004.

Article 40 of the IP Statute established that the validity of patents will be of 20 years from the filing date, but its sole paragraph states that the validity term cannot be inferior to 10 years from the granting date. Basically, this means that:

Patents granted by the BPTO in less than 10 years will be valid for 20 years from filing date; and Patents granted by the BPTO in more than 10 years will be valid for 10 years from granting date. The rationale for this rule is quite simple: to protect patent owners from long administrative...