Why Do Public Universities Lose Patents Abroad? The Challenge of Protecting Innovation

1. In your submission, it was stated that the technology was lost. Is it technically correct to say that by not paying a maintenance fee in another country, the invention disappears or becomes useless?

First, it is important to understand how international patent protection works, as this is where the problem with polylaminin arose.

There are two ways to seek protection for a Brazilian invention in other countries: either directly in the country where protection is sought, via the Paris Union Convention (PUC), or through the Patent Cooperation Treaty (PCT).

The PCT is a multilateral treaty administered by the World Intellectual Property Organization (WIPO) that allows one to file for patent protection for an invention simultaneously in multiple countries by means of a single international application.

However, a crucial point is that there is no such thing as a world patent. What the PCT provides is the possibility of filing by means of a single international application, but for each country where protection is desired one must enter the national phase individually, pay that country’s fees, submit a translation of the application, and appoint local counsel.

Subsequently, in each country, the patent owner is subject to annual maintenance/renewal fees and, failing to pay them—as occurred in the polylaminin case—results in the dismissal/abandonment of the application or, if already granted, lapse/expiry of the patent.

Under Brazilian law, Law No. 9,279/1996 (Industrial Property Law—LPI) expressly provides that a patent is extinguished for non‑payment of the annual fee and, once the patent is extinguished, its subject matter falls into the public domain. Thus, with the loss of international patents, the legal exclusivity of the researcher and the institution is lost in the countries where protection was not maintained.

Once in the public domain, the invention may be used freely by any third party in those territories—an extremely serious consequence from an economic and strategic standpoint.

2. In this case, if the international patent has expired, what does this actually mean for the researcher? Can someone else in another country freely manufacture the compound, or are there other protection mechanisms, such as trade secrets?

As noted above, the consequence is the loss of exclusivity. Since protection exists only in Brazil, exclusivity applies only domestically; in countries where no patent is in force, third parties may freely make and sell the technology.

This lack of international protection reduces the strategic value of the asset, limits global licensing capacity, and diminishes bargaining power in foreign markets. In practical terms, laboratories in other countries may replicate and commercialize the compound in their territory without paying royalties to the researcher or to the university.

As for relying on trade secrets as an alternative, its application in the polylaminin case is quite limited. The patent system requires enabling disclosure as the quid pro quo for protection and, once the specification has been published in the Industrial Property Gazette, the technical content becomes public, making it impossible to claim secrecy over what has been revealed. Trade secrets could, at most, protect aspects of the manufacturing process not disclosed in the patent filing—but not the already published invention.

That said, there remains the technical know‑how accumulated by the researcher over decades of work as a residual protection—a factual (not legal) competitive advantage—alongside the still‑valid Brazilian patent, which may serve as a basis for licensing negotiations with private partners interested in the Brazilian market.

3. Why is it so difficult for public universities to manage the costs of maintaining patents abroad? Is it a lack of budget, a lack of business acumen, or a lack of specialized personnel in Technological Innovation Centers (NITs)?

The answer is difficult, but in my view public universities lack several key elements. The first concerns budget constraints: maintaining patents abroad entails significant expenses—international filing fees, local attorney fees in each country, technical translation costs, and periodic annuities in foreign currency. For federal universities funded by the National Treasury and subject to recurrent budget cuts, this can be an insurmountable obstacle.

In addition, the institutional culture of many Brazilian universities still treats patents primarily as an academic output indicator, rather than as an economic asset to be actively managed; researchers and federal universities often lack a strategic vision of the invention’s market potential.

Moreover, NITs (Núcleos de Inovação Tecnológica)—created as a legal requirement by the Innovation Law (Law No. 10,973/2004)—operate in many institutions with small teams, civil servants without specialized international IP training, and no financial autonomy to retain specialized foreign agents.

The result is systemic: the university does develop innovative technology with public funds, but by filing and failing to sustain international protection, it ends up releasing the asset into the public domain before any economic return materializes.

4. In cases like this, would it be better for the government to partner with the private sector from the early stages so that they assume the maintenance costs in exchange for exploitation licenses?

Practically speaking, it is possible to negotiate with a private partner to assume costs and develop the technology, thereby ensuring at least royalties to the public institution and, for medicines, a product available to society.

However, there is an evident risk stemming from bargaining asymmetries: a university under financial pressure tends to accept unfavorable terms. An ideal partnership model should preserve: (i) the university’s or ICT’s (Scientific, Technological and Innovation Institution) right to continue research; (ii) the possibility of compulsory licensing for public interest under Article 71 of the LPI, allowing the State to intervene if the private partner fails to meet social demand; and (iii) reversion clauses in cases of non‑exploitation.

Thus, public‑private partnerships are welcome and legally viable, but must be carefully structured, with balanced negotiations and safeguards to protect the public interest.

5. This case suggests that Brazilian science is competitive in ideas but fragile in legal implementation. What urgent changes do intellectual property law or research funding need to prevent more inventions from “slipping through the net”?

Indeed, the polylaminin case is not isolated; it unfortunately recurs at several Brazilian universities. The changes needed are neither simple nor easy.

The Brazilian Industrial Property Law regulates domestic patents well, but imposes no state obligation to finance the maintenance of strategic patents abroad. A useful reform would be to create national patent strategy criteria, enabling the government to identify and fund technologies from public universities deemed of national interest.

In terms of funding, Brazil could create credit lines or dedicated funds to finance international patent costs for public universities, with eligibility criteria based on the technology’s strategic potential, possibly capitalized with royalties from already licensed patents.

Finally, it is relevant to restructure NITs—endowed with qualified staff, their own budgets, and contracting agility—to enable, much like U.S. Technology Licensing Offices (TLOs) after the Bayh‑Dole Act of 1980, public universities to become significant revenue generators from their scientific output.

6. Proposed changes: “There has been talk of bills to adjust patent terms due to bureaucratic delays. Is this the right approach, or does Brazil need a specific emergency fund to maintain strategic assets abroad?”

I believe both are important, but they address different problems.

INPI currently suffers from a significant backlog, having taken between 7 and 14 years to grant patents that ultimately have a 20‑year term counted from the filing date, not the grant; thus, when the right is obtained, it is partially consumed by the State’s delay. The sole paragraph of Article 40 provided for automatic term extension in such cases, but the Supreme Federal Court (STF), in ADI 5,529, declared it unconstitutional for creating anti‑competitive monopolies.

Accordingly, the solution was not to extend terms, but to tackle the problem administratively, whether by increasing staff or even conducting task forces, which the INPI has pursued through its Backlog Combat Plan.

As for an emergency fund, that would be a more appropriate approach to the specific problem revealed by the polylaminin case. A fund managed by INPI or by the Ministry of Science, Technology and Innovation, with technical eligibility criteria, would directly address the financial inability to maintain international protection for technologies developed with public resources.

The ideal policy would combine both fronts: reducing INPI’s backlog administratively and creating a strategic fund to prevent the loss of international assets due to budget shortfalls.

Brazil urgently needs to stop treating intellectual property as mere bureaucracy and to recognize it as an instrument of technological sovereignty and a high‑value economic asset.