There is no published book or article denying the direct applicability of the WTO Agreement. All commentators and law professors that write about the issue support the self-executing nature of the Portuguese translation of the TRIPS Agreement, as enacted by the presidential Executive Order. Among the commentators that have published opinions supporting the direct applicability of Portuguese translation of the WTO Agreement are:
• LUIZ FELIPE LAMPREIA, O Direito do Comércio Internacional, São Paulo, Observador Legal Ed., 1997, p.17. Mr. Lampreia is ambassador and former Minister of Foreign Affairs. 31
• ALCIDES PRATES, Comentários sobre o Acordo Constitutivo da OMC, in Guerra Comercial ou Integração Mundial pelo Comércio? A OMC e o Brasil, org. Paulo Borba Casella e Araminta de Azevedo Mercadante, Ltr Editora Ltda., 1998, pp. 96. Mr. Prates is a diplomat of the Itamaraty and currently heads the department in Brasília in charge of WTO cases and issues, known by the acronym DPC. Books and articles published specifically on the applicability of the Portuguese translation of the TRIPS agreement:
• DENIS BORGES BARBOSA, Uma Introdução à Propriedade Intelectual, Rio de Janeiro, Lumen Júris Ed., 1997, p. 63-65. Mr. Denis Barbosa is a former solicitor and legal advisor to the Brazilian PTO.32
• JACOB DOLINGER, Acordo sobre os aspectos dos direitos de propriedade intelectual relacionados ao comércio – TRIPS – Patente de invenção – aplicabilidade do acordo no Brasil, in Revista Forense, vol. 342, ano 94, p. 225. Professor Dolinger is one of the leading authorities on international law in Brazil.
• CELIO BORJA, Patente de invenção – acordo internacional – vigência, in Revista de Direito Administrativo, Renovar, julho 1998, p. 328. Prof. Borja is a former justice of the Brazilian Supreme Court.
• ARNOLD WALD, O TRIPS, a lei 9.279/96, e o direito intertemporal em matéria de propriedade industrial (com referência ao prazo de vigência das patentes), in XX Seminário de Propriedade Intelectual da ABPI, Associação Brasileira de Propriedade Intelectual, São Paulo, 08/22/2000. Prof. Wald is an author of a casebook on Civil Law.
• GUSTAVO STARLING LEONARDOS, 29 IIC 74, 76 (1998).
• OTTO B. LICKS, O Acordo Sobre Aspectos dos Direitos de Propriedade Intelectual Relacionados ao Comércio" (The TRIPS Agreement), in Paulo Borba Casella (ed.), Guerra Comercial ou Integração Mundial pelo Comércio? A OMC e o Brasil (LTR ed., São Paulo, 1998. Prof. Licks is a former advisor to the Itamaraty.
The self-execution and direct applicability of the TRIPS Agreement was confirmed by Itamaraty early on, more precisely on March 15, 1995. Itamaraty sent a notification (G/ADP/N/1/BRA/1 and G/SCM/N/1/BRA/1) to the WTO with the following language:
“With reference to documents G/ADP/N/1/Suppl.1, dated March 6, 1995 and G/SCM/N/1, dated January 30, 1995 and to Articles 16.5 and 18.5 of the WTO Agreement on Implementation of Article VI of the General Agreement on Tariffs and Trade 1994 and Articles 25.12 and 32.6 of the WTO Agreement on Subsidies and Countervailing Measures, I have been instructed to notify the Committees on Anti-Dumping Practices and on Subsidies and Countervailing Measures that: The Marrakesh Agreement Establishing the World Trade Organization and its Annexed Agreements, contained in the Final Act Embodying the Results of the Uruguay Round Multilateral Trade Negotiations, have been incorporated into the Brazilian legal system, in their full text, by Executive Order #1,355, of December 30, 1994. The Government of Brazil is presently drafting a new regulation on measures to avoid the effects of unfair trade practices, in accordance with the provisions of the above referred Agreements; this new regulation, when in force, will be duly notified to the Committee.” (Emphasis added) As already described herein, the Presidential Executive Order of enactment #1,355/94 incorporated into Brazilian domestic law the Portuguese translation of the WTO Agreement, as corroborated by Itamaraty. Furthermore, the direct applicability of the Executive Order 1355/94 specifically relating to the TRIPS agreement was also confirmed by Itamaraty in another official notification (document IP/N/1/BRA/1) circulated by the WTO with the following language: “I have been instructed by my Government to inform you that the Brazilian National Institute of Industrial Property (Instituto Nacional de Propriedade Industrial/INPI, address: Praça Mauá, nr. 7, 18 andar, CEP 20083-900, Rio de Janeiro/RJ) is the official Brazilian government agency in charge of receiving, since January 1, 1995, patent applications for inventions in the field of pharmaceutical and agrochemical products, in accordance with the provisions of Article 70.8 of the TRIPS Agreement, subject to the presentation of the following information: […] The official fee is the same for all patent applications in all fields of technology. Patent applications for inventions of pharmaceutical and agrochemical products will be processed in the same way as any other applications for patent of inventions and, when filed after January 1, 1995, will be examined according to the provisions of the TRIPS Agreement.” (Emphasis added)
It is interesting to see that Itamaraty, although very straightforward in its communications to the WTO, has a very different official opinion within the Brazilian territory. In a formal and official answer to an association representing Brazilian chemical companies that do not invest in research nor own patents, the then Secretary General of the Itamaraty, Sebastião do Rego Barros, declared that the TRIPS Agreements had not been incorporated into the Brazilian legal system, in their full text, by Executive Order #1,355, of December 30, 1994.33 Instead, only articles 3, 4 and 5 were incorporated on that occasion. The official opinion was heavily publicized in the media and in the courts where litigation regarding the application of the TRIPS Agreement was being adjudicated.
The Brazilian Patent and Trademark Office (BRPTO) has issued a regulation (called the Normative Act) on March 05, 1997, where it states the direct applicability of the Portuguese translation of the TRIPS Agreement, as enacted by the presidential Executive Order #1,355/94. Article 3.3 of the normative Act 126, regulating the filing of patent applications for pipeline patents granted the owners of mail-box patent applications, filed according article 70.8 of the Portuguese translation of the TRIPS Agreement, as enacted by Executive Order #1,355/94, of December 31, 1994, grants the right to transform a mail-box application into a pipeline application. This right granted by the Brazilian PTO, as well as the direct quotation of article 70.8 of the Portuguese translation of the TRIPS Agreement, as enacted by the presidential Executive Order, leaves no doubt that the Brazilian PTO considers the TRIPS Agreement as self-executing and directly applicable. This understanding is in harmony with the previous interpretations of the Brazilian PTO on all other industrial property treaties, such as the Paris Convention and the PCT presidential decrees of enactment. However, on November 27, 1997, the Minister of Industry and Commerce, responsible for the Brazilian PTO, issued a legal opinion approved by the Ministry, declaring that the Brazilian government was not obligated to guarantee a twenty year term to patents still valid on the day of application of the TRIPS Agreement, regardless of whether Executive Order #1,355/94 was enforceable on January 1, 1995, or January 1, 2000. The opinion was issued by the legal advisor for the Ministry, José Mário Bimbato, and approved by Minister Francisco Dornelles.34
The Brazilian Supreme Court has not ruled on the issue of the applicability of presidential Executive Order #1,355/94 enacting the WTO Agreements. However, two cases have already reached the Superior Justice Court, under the court’s jurisdiction to review cases when the appealed decision infringes a treaty, or denies its applicability, as expressed in article 105, III, c, of the 1988 Constitution.
Although not related to the TRIPS Agreement, both cases in the Superior Court of Justice upheld the direct applicability of the presidential Executive Order of enactment #1,355/94 in antitrust investigations started before the enactment of the Executive Order.
One of the two cases before the Superior Court of Justice upholding the direct applicability of the Portuguese translation of the WTO Agreement, as annexed to the presidential Executive Order #1,355/94 is the writ of mandamus 5.628 of the Federal District (Brasilia, 98.0005261-5). This Writ was decided on November 6, 1998, and published on May 17, 1999. The precedent concerned an antidumping case on imported mushrooms from China. However, the important issue was the applicability of presidential Executive Order #1,355/94, which was undisputable the parties. Another important issue is the application of procedural rules and substantive standards enacted after the initiation of the antitrust investigation.
Concerning the writ of mandamus 4,516, the plaintiff sustained that the nullity of a Government antidumping investigation was not being conducted in accordance with the rules established by Executive Order #1,355/94 (the Agreement on the Implementation of Article VI of GATT 1994, the "Antidumping Agreement”). The defendant alleged that Executive Order #1,355/94 was not applicable because the administrative proceedings had already started when it became effective.
The proceeding started on December 22, 1994 and ended on January 17, 1996. Thus, according to Justice Humberto Gomes de Barros, who delivered the decision, the proceeding commenced under the effect of the former law for a period of five days, and continued for a year and a half after the new law (Executive Order #1,355/94) became effective.
In his decision, Justice Barros stated that the effect of the procedural rules contained in the Executive Order #1,355/94 was immediate, and should affect the entire proceeding, despite having commenced under the former law.
Finally, in light of the facts, Justice Barros granted the mandamus in order to nullify the administrative antidumping proceeding and remanded the investigation, instructing the agency to respect the rules contained in the Executive Order #1,355/94.
The question on the self-execution of Executive Order #1,355/94 has also arisen in connection with the TRIPS Agreement. Although no judgment from the Superior Court of Justice has been issued yet, a number of cases have been decided in the federal circuit courts in Rio de Janeiro.
In a suit seeking declaratory relief, the TRIPs Agreement was held to be self-executing and the sole basis for issuing an injunction against the Brazilian patent office, BRPTO.35 According to the decision, the TRIPS provisions became the law of the land in Brazil once the WTO Agreement, (including the TRIPS Agreement), was enacted by the presidential Executive Order #1,355/94.
The court further held that the TRIPS patent provisions superseded contrary provisions of Brazilian patent law.36 The court explained the grounds for that decision, stating that the TRIPS Agreement is a treaty on the same level as federal statute and that it effectively amends when it differs a prior statute but follows it in time. The court found that in the presidential Executive Order in question, the Brazilian government had failed to opt in under Article 65 of the TRIPS Agreement, which would have delayed Brazil in incurring the relevant TRIPS obligations. Accordingly, the court ordered these obligations to be implemented immediately. 37
It is important to note that the court has revised a decision of the Brazilian PTO, which had been issued under the office’s powers to implement and interpret the patent law in respect of patent applications and issued patents. The court simply reviewed the BRPTO decision on the issue, but arrived at a different conclusion and interpretation. That is enough in Brazil to give any federal judge the authority to reverse a decision from the Brazilian PTO.
31 “Enfim, acho que, como eu dizia no começo, esse grande impacto da realidade internacional, das regras internacionais sobre a nossa vida cotidiana, sobre o que vestimos, o que comemos, os carros que dirigimos, o transporte que utilizamos, enfim, todos os aspectos da nossa vida e de todos os aspectos da regulação dessa vida, que eram até há alguns anos, a prerrogativa exclusiva dos governos nacionais, hoje se encontra fortemente limitados na sua capacidade autônoma de reger a vida econômica e social de cada nação, porque têm hoje como lei interna incorporada ao direito positivo interno, todo o corpo de regras internacionais, e, no caso do comércio internacional, incorporados nas 550 páginas dos acordos da OMC.”
32 “Será no âmbito da Propriedade Intelectual e, em particular, da Propriedade Industrial, possivelmente, onde se dá com mais freqüência em nosso Direito a aplicação direta das normas internacionais. Admitamos, neste ponto, que já está superada a questão da integração indireta, ou seja, a dúvida de se a integração efetiva do instrumento no sistema legal exige ou não a promulgação de uma lei específica reproduzindo o conteúdo do Tratado aprovado. Cremos que, a partir da série de decisões do Supremo Tribunal Federal sobre as leis Uniformes de Genebra a dúvida foi eliminada: não se exige tal lei.”
33 Official communication #65, of the DPC-MRE/PEXT, dated November 17, 1997.The Brazilian PTO has never been allowed by the Administration to implement TRIPS article 70.2, extending the patent term of the valid patents as of January 1, 1995. The statutesuits are filed in order to have the courts extending the patent term and ordering the Brazilian PTO to reissue letter-patents with the new patent term printed on them. Official communication #65 was filed by the Brazilian PTO on several statutesuits filed in Brazilian federal courts to have the patent terms extended to 20 years from filing, as per article 33 of the Portuguese translation of the TRIPS agreement, enacted by presidential Executive Order #1,355/94. Even after several court decisions from the fourth Federal Circuit, the Brazilian PTO has not changed its position. The Brazilian PTO still maintains that no patent issued before May 15, 1997, the day of enactment of the new Brazilian IP Statute should have the 20 years term.
34 Official Gazette, Friday, November 28, 1997, page 28076, § I.
35 Zeneca Ltd. c. Diretora de Patentes do INPI, 9th Federal District Court (V.J.F.), Rio de Janeiro, Case No. 970,003,260-4, July 30, 1997, D.O., Aug. 18, 1997, p. 36 (Judge: Valéria de Albuquerque).
36 I.e., Statute No. 5,772 of 1971, now expressly revoked by Statute No. 9,279 of 1996.
37 For a partial English translation followed by comments, see Gustavo Starling Leonardos, 29 IIC 74, 76 (1998). For an analysis of the enactment of the GATT legislation in Brazil, focusing on the TRIPs Agreement and its consequences on the level of the Brazilian Constitution and public international law, see Otto B. Licks, "O Acordo Sobre Aspectos dos Direitos de Propriedade Intelectual Relacionados ao Comércio" (The TRIPS Agreement), in Paulo Borba Casella (ed.), Guerra Comercial ou Integração Mundial pelo Comércio? A OMC e o Brasil (LTR ed., São Paulo, 1998).