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Court of Appeals decides first mailbox patent cases

May 6, 2015

On April 28, 2015, the decision of the 2nd Panel of the Court of Appeals for the 2nd Circuit limited the term of several mailbox patents to 20-years from filing, instead of 10 years from grant, as requested by the BRPTO. This is the first decision of an appellate court concerning the term of mailbox patents.

The Panel was composed by Hon. Andre Fontes, Hon. Simone Schreiber and Hon. Messod Azulay. Hon. Fontes and Hon. Schreiber shared the view that the patent statute limits the term of mailbox patents to 20 years from filing. They found that the patent owners did not have a legitimate expectation to make use of the 10-year term from grant since it was granted by the BRPTO in violation of the Law. Hon. Andre Fontes also questioned the constitutionality of mailbox patents.

Hon. Azulay issued a dissenting decision in favor of the patent owners, finding that there was no violation of the Law when the BRPTO granted patents with a 10-year term from grant. In his view, the patent statute did not prevent the granting of this minimum term of protection for mailbox patents as it does with respect to pipeline patents. Moreover, he found that the lawsuits filed by the BRPTO seeking to invalidate those mailbox patents were a violation of the constitutional principle of “legitimate expectation”.

The following appeals were decided on April 28:

Case # 0132260-18.2013.4.02.5101 – BRPTO v. D. Western Therapeutics Institute, Kowa Company, Durect Corporation, Elanco Animal Health Ireland Limited, Eurovita A/S, and Evonik Goldschmidt – Appeal filed by the BRPTO against the decision issued by Hon. Eduardo Brandão, of the 25th Federal Court, that dismissed the BRPTO’s complaint on the merits.

Case # 0132356-33.2013.4.02.5101 – BRPTO v. The Welcome Foundation Limited, The Secretary of State for Defense, Theratechnologies Inc., the United States Government as represented by the Secretary of the Army, and The Université de Montreal – Appeal filed by the BRPTO against the decision issued by Hon. Eduardo Brandão, of the 25th Federal Court, that dismissed the BRPTO’s complaint on the merits.

Case # 0001851-17.2014.4.02.5101 – Keiko Otsu v. BRPTO – Appeal filed by Keiko Otsu against the decision from Hon. Marcia Nunes, of the 13th Federal Court, that granted the BRPTO’s request to reduce the patent term.

Case # 0000360-15.2015.4.02.0000 – Eurofarma Laboratorios S/A v. BRPTO, Eli Lilly do Brasil Ltda. and Icos Corporation – Interlocutory appeal filed by Brazilian company EurofarmaLaboratorios S/A against a decision from the 9th Federal Court that had rejected its request for a preliminary injunction to reduce the term of Eli Lilly’s mailbox patent PI 9506559-8.

 

If you have any questions or need additional information, please contact us at prevail@lickslegal.com.