Superior Court Of Justice Makes First Decision On A Mailbox Patent

Author:Ms Marta García
Profession:Moeller IP Advisors
 
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On April 20, 2018, Brazilian "mailbox" patent PI9507594-1 by Alexion Pharmaceutical Inc. protecting the drug Soliris® (eculizumab) received an unfavorable ruling by the Brazilian Superior Court of Justice regarding its term of protection.

The Court decided that "mailbox" patents are not entitled to the minimum term of protection provided by Article 40 of the Brazilian Industrial Property Law - 10 years from the date of grant - but instead should be 20 years from the filing date. This decision can still be appealed at the Supreme Court of Justice.

"Mailbox" patents in Brazil are those relating to pharmaceutical and agrochemical products, which were filed in Brazil between January 1, 1995 and May 14, 1997.

Before January 1, 1995, when Brazil adhered to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, patents covering pharmaceutical and agrochemical products were not allowed in the country.

When Brazil agreed to adopt the TRIPS Agreement, in light of its Article 70.8, a transitional period was granted in order to enact new laws that were TRIPS compliant. Article 70.8 of TRIPS establishes that when a TRIPS Member considered pharmaceutical or agrochemical products as non-patentable subject matter, such Member should provide means by which these patent applications could be filed for subsequent prosecution under the new IP Law adapted to the TRIPS provisions.

This section of the TRIPS Agreement is often referred to as the "mailbox" provision, and patents resulting from applications filed during the transitional period are often referred to as "mailbox" patents.

On May 15, 1996, Brazil enacted a new Industrial Property Law (Law 9.279) that allowed patent protection for pharmaceutical and agrochemical inventions, with full provisions that went into effect on May 14, 1997.

In 1999, the Brazilian IP Law 9.279 was amended by a Provisional Measure, which later became Brazilian Law 10.196, and included provisions regarding "mailbox" patent applications with the aim of regulating the prosecution of said applications filed based on Article 70.8 of TRIPS.

According to Law 10.196, patent applications relating to pharmaceutical and agrochemical products filed between January 1, 1995 and May 14, 1997 should be examined and granted under the provisions of the new IP Law (which allows patentability of this subject matter) until December 31, 2004 and granted with a 20-year term of protection from their filing dates.

Nonetheless, the...

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