Event Driven Takeaways
- On Nov. 28, 2017, a Brazilian crop growers association filed an action challenging a Monsanto patent related to its Intacta RR2 PRO soybean seeds. This was a first step in the challenge process and the case does not approach an imminent decision.
- The widely reported filing on Jan. 17 was a technical opinion submitted by the INPI and not a final decision. According to the INPI, Monsanto has not yet presented its reply to the complaint.
- The decision would affect only one patent, and it is not clear how many of Monsanto’s supplementary patents protect Intacta RR2 PRO soybean seeds. The patent is scheduled to expire in 2022.
On Nov. 28, 2017, a Brazilian growers association filed an action challenging the validity of Monsanto’s Brazil Patent No. PI 0016460-7, which relates to Monsanto’s Intacta RR2 PRO soybean seeds.
Recently, many news outlets reported that a Jan. 17 document indicated that Brazil’s National Institute of Industrial Property, or the INPI, had essentially voided the patent.However, Brazilian patent law indicates that the process of nullifying Monsanto’s patent is not yet complete. As confirmed by the INPI, Monsanto will have an opportunity to defend the validity of its patent. Monsanto’s Intacta RR2 Pro Soybean Patent
Monsanto’s Brazil Patent No. PI 0016460-7 was filed on Dec. 12, 2000 and issued on Oct. 2, 2012. The patent relates to pesticide-resistant soybeans, and is related to a US patent application that is part of a family of 12 related applications that have resulted in the issuance of several US patents. The patent is valid through Oct. 2, 2022.
Brazil’s Patent Regime
Brazil’s patent laws are codified in Industrial Property Law No. 9279/96, or the BIPL. Article 40 of the BIPL states that patents are issued for a term of 20 years from the filing of the application
or 10 years from the date of issuance, whichever is longer. Because prosecution of patents in Brazil often take more than a decade, many patents - including the nullified Monsanto patent - expire 10 years from the date of issuance.
Though Article 50 of the BIPL allows the INPI to preside over an administrative nullity procedure within 6 months of the issuance of a patent, nullity actions after 6 months of issuance are handled by federal courts. Article 56 of the BIPL allows the INPI or any legitimately interested party to file a nullity action at any time during the term of the patent. Article 57 states that nullity actions will be presided over by a Brazilian federal court, with the INPI participating in the action in all cases. A party whose patent is the subject of a nullity action has 60 days to respond. According to Article 57, once a nullity decision becomes final, the INPI publishes a notice to inform third parties.
Nullity actions decided under the BIPL affect only Brazilian patents, and do not affect the status of related patents in other countries, including the United States.Aprosoja Mato Grosso Case
The nullity action targeting the Monsanto patent was filed by a grain growers association known as Associação dos Produtores de Soja e Milho do Estado de Mato Grosso, or Aprosoja. Aprosoja is based in the Brazilian state of Mato Grosso, which is a state in western Brazil known for agricultural development. Aprosoja filed its initial complaint targeting the Monsanto patent in the 2nd Federal Court of Mato Grosso on Nov. 28, 2017. Article 57 allows Monsanto 60 days to respond.
Several news outlets have reported that a Jan. 17 document indicating that the INPI issued an unpublished opinion in December 2017 is evidence that the Brazil government has found that the patent should be voided.
However, because the Monsanto patent issued in 2012 - well outside the 6-month window prescribed by Article 50 of the BIPL - the INPI acts as a party in the nullity action, and does not have the authority to ultimately decide the issue. That decision will be left to the 2nd Federal Court of Mato Grosso. The BIPL does not provide any timelines for the federal court to issue a final order, and it is not clear when such an order will be filed.
--Damion Jurrens