Brazil: will patent terms be changed before the proposed amendment to the law gets the green light?

The Brazilian INPI’s Procuradoria submitted 34 actions in the Federal Court of Rio de Janeiro  to correct the validity of 247 agrochemicals and pharmaceuticals patents.

The action concerns the validity of the patents in the chemical and pharmaceutical industry that were requested in Brazil between January 1995 and May 1997. The intention is to correct the term of these patents, which may be reduced.

Background

On January 1995, Brazil adopted the Agreement on Trade-Related Aspects of Intellectual Property Rights Related Rights (TRIPS )  and thus, started to protect under patent law, all  technological fields -- including chemical and  pharmaceutics that Brazil did  not allow until then.

Developing countries were permitted certain transitional periods (up to 10 years) to enact new laws that compliant with TRIPS. Nevertheless, Article 70.8 TRIPS establishes that developing countries that opted to take this transitional period were required to allow inventors to file patent applications on pharmaceutical and agrochemical products beginning on January 1, 1995 -- despite the fact that the granting of the patent could be delayed up until January 1, 2005.  This provision of the TRIPS Agreement is known as the ‘mailbox’ provision.

Brazil introduced a new legislation (No. 92790 of 14 May 1996) but patents application for pharmaceutical and agrochemical products could be filed since January 1995. The law also provides that a patent should be granted protection for a period limited to 20 years from the date of the application/deposit. Moreover, Art 40 of the same law grants patent protection beyond 20 years when the granting of a patent exceeds 10 years – to compensate for the delay. This latter procedure is been revised (see Jeremy’s post here re. Brazil’s Proposed Patent Law Reforms) and thus, INPI’s Procuradoria argues that the coverage of the 20 years should be counted from the day of the filing.
Indeed, TRIPS does define the objective to be attained and it is for member countries to establish their procedures. At the moment proposals to amend the Paten Law are on their way – specifically to this case, one of the proposal is to revoke Article 40 of Law No. 92790, since Article 33 of the TRIPS only requires that “The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.” Therefore, there is no requirement for patent term extensions to compensate for delays.

Brazil would like to correct  the time period granted to patent; and indeed they have the right to do so, but is Brazil forgetting the general principle of ‘legal certainty’?. Should this amendment to the law have retroactive effect?