Judge Clarice Claudino da Silva ordered Monsanto do Brasil Ltda and Monsanto Technology LCC “to deposit in court one third of the royalties relating to the invention patent PI9816295-0, counting from its expiration date, which occurred on 03/03/2018” . The case involves “Intacta RR2 Pro” soybeans. It was filed in the records of interlocutory appeal 1014311-30.2022.8.11.0000, arising from action 1011982.53-2021.8.11.0041. (Read case updates at the bottom of this page)
The decision was made following a request for reconsideration, received as an internal appeal. The main basis for the change in understanding was the content of the decision of the Federal Supreme Court in ADI 5529. In it, the ministers judged the sole paragraph of article 40 of Law 9.279/96 to be unconstitutional. Therefore, some effects of invention patents are limited to 20 years after the application for recognition with the INPI. The ministers prohibited the possibility of repeating overpayments in the case of medicines, hospital products and pharmaceuticals. For other products, the excess amounts paid would be refunded.
However, as stated in the report of judge Clarice's decision, there would have been bad faith on the part of lawyers when citing the STF's decision. They would have omitted the part that restricts the repetition of undue payments, implying that this would not be possible in any case. It should be noted that the judge did not decide whether there was bad faith. She left this point to be assessed after a statement from the lawyers.
The judge's provisional decision will be examined by the panel of the Second Chamber of Private Law of the Court of Justice of Mato Grosso after a statement from the Attorney General's Office.
The authors of the action are Aprosoja-MT, Aprosoja-BA, Aprosoja-GO, Aprosoja-PI, Aprosoja-TO and AMPA.
A Bayer, which acquired Monsanto, commented on the decision in the following terms:
"Bayer has strong legal arguments seeking to revoke the interim relief granted in the case. The Intacta RR2 Pro technology is protected by intellectual property rights, both patents and of a different nature. The company is evaluating alternatives to determine next steps."
In the late afternoon of 22/08, lawyers representing Monsanto petitioned the process, adding a substitution so that the lawyer Valerio de Oliveira Mazzuoli could start working on the case. Mazzuoli is a professor at the Faculty of Law at the Federal University of Mato Grosso. He has a recognized academic career.
Monsanto appealed to the Federal Supreme Court (STF) against the TJMT decision (Rcl 56393). Minister Nunes Marques, as a precaution, suspended the effects of the decision until the complaint is judged. See if:
“Monsanto Technology LLC. and Monsanto do Brasil Ltda allege that the Rapporteur of AI 1014311-30.2022.8.11.0000 of the Court of Justice of the State of Mato Grosso failed to comply with the modulation of effects that occurred in the judgment of ADI 5.529.
They narrate being the defendant in an action promoted by the Association of Soy and Corn Producers of the State of Mato Grosso — APROSOJA/MT, in which they seek, based on the declaration of unconstitutionality of the sole paragraph of art. 40 of Law 9.279/96, condemning the complaining party to (a) refrain from charging royalties for the use of technology related to patents from the dates on which the titles entered the public domain and (b) repetition of undue payment of royalties paid for a period exceeding 20 (twenty) years of validity of the patents, counting from the date of the application protocols.
They report that the requested authority accepted a request for reconsideration in order to, in anticipation of appeal protection, order the complainants to deposit in court 1/3 (one third) of the royalties relating to the invention patent PI9816295-0, counting from the date of its expiration date, which occurred on 03/03/2018.
They claim that the aforementioned determination disregards the terms of the modulation of effects operated in the judgment of ADI 5.529, which protects from the retroactive effectiveness of its pronouncement the concrete effects already produced as a result of the extension of patents authorized by the device declared unconstitutional.
For this reason, they request the suspension of the effectiveness of the act complained of and, in the end, its revocation.
It's the report.
2. […] It seems to me, at least in this summary judgment, that the Court of Appeal overlooked the final part of the determination relating to effective modulation, as even in hypotheses involving legal actions filed before April 7, 2021 — which , in principle, would submit to the retroactive effectiveness of the paradigm — the effects of contracts signed based on the device declared unconstitutional must be observed and protected.
Therefore, the assertion that the complained body failed to comply with the terms of the modulation of effects in ADI 5.529 when determining the deposit in court of royalties relating to the period in which the claimants were protected by the privilege provided for in paragraph unique to art. 40 of Law No. 9.279/1996.
The danger of delay, in turn, arises from the imminent date (October 26, 2022) set by the Court for the deposit of a large amount — R$1,3 billion.
3. Therefore, without prejudice to the re-examination of the matter in the judgment on the merits, I grant the request for an injunction, to suspend the effects of the contested decision until the judgment of this complaint.[...]". (Rcl 56393 MC / MT - MATO GROSSO - PRECAUTIONARY MEASURE IN THE COMPLAINT - Rapporteur: Min. NUNES MARQUES)
The rapporteur at TJMT provided information to the minister. Among other points, she said:
“However, despite the modulation of effects ratified by the Supreme Court, I found that these do not apply to the specific case, as the legal transaction existing between the parties is related to the patents for the technology called “INTACTA RR2 PRO”, registered as PI0016460 -7; PI0610654-4 and PI9816295-0, which are linked to the Agribusiness economic sector, and not to the area of medicines, hospital products and pharmaceuticals.
Furthermore, I found that the collective action filed on 06/04/2021, which, in theory, guarantees the Appellants another exception to the modulation of effects, given that the precautionary measure granted by the Supreme Court was modulated with retroactive effects ex tunc and erga omnes on the cases filed by the deadline (07/04/2021).
For these reasons, early appeal relief was granted to determine that the Appellees deposit in Court 1/3 (one third) of the royalties relating to the invention patent PI9816295-0, counting from the date of its expiration, which occurred on 03/ 03/2018. […]".
Producer associations filed an appeal against Minister Nunes Marques' decision. The process is with him for analysis.
Minister Nunes Marques issued a decision reviewing his previous understanding. The complaint was judged unfounded, determining that the second instance decision (TJMT) should take effect again. See by clicking "Nunes Marques announces favorable decision for soybean producers".
Aprosoja-MT's lawyers filed a petition requesting a subpoena from Monsanto to deposit the amounts in court.
On April 20, 2023, judge Clarice Claudino da Silva suspended the processing of the interlocutory appeal until the Federal Supreme Court judges the regulatory appeal filed in complaint (Rcl) 56393.
On May 31, 2023, Monsanto added to the process, in the first instance, a guarantee insurance policy in the amount of R$25.847.088,80, issued by Fator Seguradora S/A.
On August 12, 2023, the appeal was included in the trial calendar for September 19, 2023. On this day, it was excluded from the trial calendar.
On November 28, 2023, the appeal was included in the trial calendar for December 05, 2023. On November 30, 2023, it was excluded from the trial calendar.
For judgment, the case must be included again on the trial agenda. There is no deadline for this to happen. (Explanation: in courts, except for some emergencies, judgments are always included in public lists so that everyone knows when the issue will be decided.)
On February 20, 2024, Rcl 56393 (0129081-44.2022.1.00.0000) was included on the agenda for judgment on 27/02/2024.
Despite being put on the agenda, the complaint (Rcl 56393) was not judged. In the days following inclusion for trial, two petitions with substitutions were presented. The action is with the rapporteur. When asked about the procedure, the press office of the Federal Supreme Court limited itself to saying that "the complaint in question has not yet been judged".
The complaint (Rcl 56393) was heard today. Read complete information in "STF judges complaint in Intacta RR2 Pro soy royalties case".
On August 30, 2024, Judge Celia Regina Vidotti handed down a partial sentence in public civil action 1011982-53.2021.8.11.0041:
"[...] pursuant to art. 356, II of the CPC, combined with art. 40, caput, of the LPI, I partially judge the merits, in order to declare the terms of validity of the patents discussed in this action, in agreement with the decision handed down in ADI 5.529, in the following terms: patent PI 0016460-7, now has a validity period until 12/12/2020; patent PI 0610654-4 now has a validity period until 26/05/2026 and patent PI 9816295-0 now has a validity period until 03/03/2018.
Send an official letter to the National Institute of Industrial Property - INPI, forwarding a copy of this judgment, for the correction of the validity periods of the patents, as established above, with the issuance of the respective corrected patent letters.
I further determine that INPI be notified to inform this Court, within fifteen (15) days, of all intellectual property rights deposited and registered that comprise the INTACTA RR2 PRO technology, belonging to Monsanto Technology LLC.
The applicant is hereby summoned to comment on the petition and documents enclosed by the defendant (id. 166470630).
The representative of the Public Prosecutor's Office should be notified and made known, if there is any interest.
Afterwards, with the information from INPI and the statements of the parties, make the case concluded for the measures of art. 357, of the CPC."
This decision resolved part of the discussion. The remaining points will be analyzed again by the judge after the production of new evidence and arguments, which will be defined in a decision on the sanitation and organization of the process (article 357 of the Code of Civil Procedure).
Bayer commented on the case in the following terms:
"Bayer is evaluating the next steps for this action. We would like to emphasize that the value of Intacta RR2 Pro technology is based on the benefits to agriculture and productivity gains for farmers and the added value to the entire production chain, a technology protected by several intellectual property rights, including patents, pending patent applications, know-how, etc.
Recently, the National Institute of Industrial Property (INPI) granted two additional patents to Bayer to protect the inventions of Intacta RR2 Pro, in addition to those previously patented. These patents will be valid until the end of 2028 and this fact does not bring any change to our business, including with regard to the payment of royalties.
The granting of these additional patents confirms the validity of the intellectual property rights over Intacta RR2 Pro, proving the functionality of the regulatory systems in the country and, consequently, reaffirming the viability of the significant investments in technology, which have significantly boosted productivity in soybean crops."
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