The Brazilian Federal Circuit and the attorney general’s office upheld the WTO/TRIPS
Agreement self-executing with no transitional period and extended a Brazilian patent term from 15 to
20 years from filing (Akzo Nobel).
M,L & Cia introduces new ways to minimize litigation costs to those interested in benefiting from the
five year patent extension term set by the new precedent handled by the office (see page 2).
The first panel of the Second Federal Circuit held on June 8, that the WTO’s TRIPS agreement of April
15, 1994 became the law of the land in Brazil on January 1st, 1995, after it was signed into a
presidential decree (decree 1355/94) following approval by the Brazilian Congress. The decision
reversed a lower court ruling which had rejected a writ of mandamus against the Brazilian PTO (INPI)
hon. vice-commissioner for patents. (Akzo Nobel N.V. v. Diretora de Patentes do INPI).
The Second Federal Circuit Court is the most important Brazilian court with jurisdiction to review
the Brazilian Patent Office’s decisions, as a second instance federal court, such as the US Court of
Appeals for the Federal Circuit.
Both Hon. Circuit Judge Carreira Alvim, (writing the unanimous opinion for the first panel of the
Second Federal Circuit) and the General Attorney’s office in Rio de Janeiro agreed with plaintiffs’
arguments, deeming i) the TRIPS Agreement a self-executing treaty with no transitional period and ii)
stating that the Agreement implied amended provisions of Brazilian patent law which were in conflict
with the Agreement (law 5772/71, expressly repealed by law 9.279/96).
Akzo Nobel’s patent 8905340-0 was issued by INPI on March 25, 1997 for a term of 15 years from the
filing of the patent application. Despite Akzo Nobel’s administrative appeals the vice-commissioner
for patents refused to issue the patent for a term of 20 years, alleging that article 24 of law
5772/71 did not allow for a term longer than 15 years. The vice-commissioner’s decision hinged on
arguments that the TRIPS Agreement was not self-executing and that the transition periods found in
its article 65 (which developing countries can use to delay application of the Agreement) would
allow for a 15 year patent term until the year 2000.
The Second Federal Circuit and the general attorney’s office rejected INPI’s interpretation of the
nature of the TRIPS Agreement in Brazilian law and granted the writ to extend Akzo Nobel’s patent
for a term of 20 years from the filing based on TRIPS articles 33 and 70.2.
Several other decisions upholding the TRIPS Agreement on the exact same grounds were already issued
in Brazil by lower Federal Courts (see the Max-Planck-Institute‘s international publication 28 IIC
74-83,128). We became aware of only one prior case (Haag Streit, unreported) which has been
unsuccessful before the fourth panel.
Nevertheless, the importance of Akzo Nobel should be stressed as the first favorable one before the
Second Federal Circuit Court. Indeed, Hon. Circuit Judge Carreira Alvim, who wrote the unanimous
opinion for the first panel, is a leading author and respected scholar in Brazil. His decision,
therefore, will likely be followed by other judges.
m,l & cia introduces new ways to minimize litigation costs to those interested in benefiting from
the five year patent extension term set by the new precedent handled by the office .
Akzo Nobel’s decision is a leading case before the Second Federal Circuit that strongly enhances
chances of successfully obtaining a five year patent extension term to all Brazilian patents which
have not expired before January 1, 1995 or were granted between this date and May 15, 1997, when the
new Brazilian patent law became effective establishing, thereafter, a 20 year patent term as from
the filing date.
Despite the new precedent, the Brazilian PTO has not reviewed its position regarding this issue.
Therefore, patent owners interested in obtaining the same patent extension term will also have to
file similar lawsuits against the Office.
Committed to make the patent extension term affordable to all patent holders in Brazil, M, L & Cia.
has developed a cost conscious way to file similar lawsuits against the Patent and Trademark Office
based on a per patent fee with increasing discounts. A cap on fees is also available.
If you would like to discuss these services, please contact Luiz Leonardos, Gustavo Leonardos or
Otto Licks at our Rio de Janeiro Office.
M,L & Cia. is proud to inform that with Akzo Nobel’s decision reversing a lower court ruling the firm has a perfect score, (with a 100% efficacy) in all six cases already filed by us on the patent extension term. Where a preliminary ex parte injunction was not available, M,L & Cia was able to obtain summary judgment.
FERNANDO HENRIQUE CARDOSO
José Serra
Alcides Lopes Tápias
