The limits of the non-exhaustion exception in Brazilian patent law — a case study

Abstract

This article critically examines the interpretation adopted by the Brazilian Superior Court of Justice in the judgment of Assumption of Jurisdiction Incident No. 4 (Special Appeal No. 1,610,728/RS) regarding the patent exhaustion regime applicable to transgenic seeds, in light of articles 18(III), 42 and 43(VI) of Brazilian Industrial Property Law No. 9,279/1996. It argues that the precedent commits a normative subsumption error by equating the transgenic plant, a non-patentable subject matter, with the concept of “patented product”, a category reserved, in living matter, to transgenic microorganisms; and that the same imprecision undermines the claim over the isolated gene as an autonomous product, likewise outside the exception in article 18(III), sole paragraph. Using a dogmatic-critical method grounded in primary sources, the article identifies structural flaws in the precedent's ratio decidendi, including conflation of the objective and temporal senses of “directly”, judicial creation of an unsupported doctrinal category, hermeneutical inversion between rule and exception, and omission of the qualifier “commercial” from article 43(VI). It contrasts the Brazilian solution with Bowman v. Monsanto Co. and EU Directive 98/44/EC, proposing a constitutionally-oriented reading that preserves the incentive to biotechnological research without rendering the statutory patentability exclusions a dead letter.