by Ivan B. Ahlert
April 01, 2003
Many among our clients continue to seek information regarding the possibility of extending to 20 years the original 15-year term of patents granted under the previous legislation. Unfortunately, the Brazilian Patent Office (INPI) is still rejecting all our administrative requests for extension, although we are being successful in most court actions we file for this purpose.
The explanation for this is at the same time simple and complex. From the very beginning of discussions regarding extension of term there were two questions that arose: (i) what was the date of application of TRIPS as far as Brazil is concerned?; and (ii) are member countries required to extend the term of patents granted before the "date of application"?
We have always affirmed that the date of application of TRIPS was January 1, 1995 while the official government interpretation maintains that it was January 1, 2000. We have also always understood that, yes, TRIPS does require members to extend the term of patents granted before the date of application and which are still alive at that date. On the one hand, the disagreement as to the date of application is now irrelevant for new demands, since even the officially accepted date has passed. However, the decision issued by the WTO’s Appellate Body (WT/DS170/AB/R of 18 September 2000), concerning a complaint made by the USA against Canada on the issue of the term of patents granted before the date of application, clarifies that members are required to extend the term of such patents which were alive at that date.
In one of the most recent decisions issued by the INPI, the report acknowledges the legitimacy of our request on the above grounds, but declares itself unable to grant an extension in view of an official opinion issued by the Ministry of Industry, Commerce and Tourism, back in 1997. Since the issuance of the decision by the WTO concerning this issue in 2000, we have been trying informally to revert that opinion without success, and thus, so far, the courts remain our only alternative for obtaining an extension of patent term.