Tuesday, 4 June 2013
THE PIPELINE SYSTEM
HERE COMES THE PROBLEM: PATENT PROTECTION AND TERM
Some developing countries such as Brazil, Thailand, Argentina and Uruguay have provided pipeline patent protection BUT they parameters do differ. Yet we have seen steadiness in Brazil regarding the patent term. Since 2010, the Brazilian Instituto Nacional da Propriedade Industrial (INPI) together with Brazilian courts, have applied an established rule i.e. ‘the twenty year patent term should not begin with the date the pipeline patent was granted but rather the earlier abroad filing date’. Clearly the term of specific pipeline patents has been effective and thus, some of the most successfully pharmaceutical companies have seen their drugs with shorter terms of protection e.g. Pfizer’s Viagra and Lipitor and Novartis’ Gleevec.
In 2011, Monsanto was also defeated by the same rule in Brazil: Monsanto unsusceffully brought a claim to extend two patents which involved the herbicide Roundup (here).
In this particular case I read another interesting fact: if the application made abroad was abandoned, this still will be the relevant date for calculating the term from which the 20yrs should run. The court's statement goes as follows: "the protection offered to foreign patents, called pipeline patent, lasts for the remaining term of protection in the country where it was deposited/first request, to the maximum term of protection granted in Brazil - 20 years - from the date of the first filing abroad, even if subsequently abandoned.”
Finally, the STJ noted that the pending trial in the Supreme Court that discusses the constitutionality of the Industrial Property law does not suspend any other actions that are handled at the STJ.