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NATIONAL PATENTS

General information about patents in Portugal

What types of industrial property rights exist in Portugal?

In Portugal, industrial property rights include invention patents, utility models, registered designs and trade marks. There are also provisions for registering supplementary protection certificates, semiconductor layouts, logotypes, appellations of origin or geographic indications, trade names or insignia.

What is the status of patent protection in Portugal?

Portugal is a member of the Paris Convention (since 1883), member of the World Intellectual Property Organization (WIPO) since 1967, member of the European Union since 1986, and a World Trade Organization (WTO) member since 1995.

The following relevant treaties are also in force: Strasbourg agreement – since May 1, 1979; European Patent Convention (EPC) – since  January 1, 1992; Patent Cooperation Treaty (PCT) – since Nov. 24, 1992; UPOV Convention – since October 14, 1995;  Budapest Treaty – since October 16, 1997.

Portugal has established a specialized Intellectual Property Court (March 2012), which is expected to produce specialized quality decisions within reasonable time-frames. However, note that Portugal, though a signing party, has not yet notified WIPO on accession to the Patent Law Treaty (PLT). Also, Portugal has not acceded to the London Agreement.

Portugal is a participant in the enhanced cooperation on the unitary patent protection and has signed the Agreement on a Unified Patent Court.

How long are the terms of protection of Portuguese invention patents and utility model patents?

The term for invention patents in Portugal is 20 years from the filing date. The term for utility model patents is 10 years from the filing date, though they require explicit renewal action on the 6th and 8th years from filing date.

What subjects cannot be patented in Portugal?

According to the Portuguese Industrial Property Code, there are subjects which are not patentable in Portugal. The following are among those subjects:
a) Discoveries, scientific theories and mathematical methods
b) Materials or substances already existing in nature and nuclear materials;
c) Aesthetic creations
d) Schemes, rules or methods for intellectual acts, playing a game or doing business and computer programs, as such, with no contributions
e) Presentations of information

Furthermore, Inventions against the law or contrary to public policy, public health or morality are also not patentable:

a) Processes for cloning human beings;
b) Processes for modifying the germinal genetic identity of human beings;
c) The use of human embryos for industrial or commercial purposes;
d) Inventions for genetic modification of animals which may cause them suffering without any substantial medical benefit.

The following, in particular, are also not patentable:

a) The human body (exceptions apply to isolated genetic elements with specific application)
b) Plant and animal varieties and essentially biological processes for obtaining plants or animals;
c) Surgical or therapeutic methods for treating the human or animal body
d) Diagnostic methods used on the human or animal body

Can computer software be patented in Portugal?

Computer programs as such cannot be patented, but they may be protected under Copyright Law. An invention containing a computer program may be patentable if there are inventive technical considerations involved, following closely the European Patent Office practice and case-law.

Where can I find official information about patent fees in Portugal?

You can find official information about patent fees on the Industrial Property Office of Portugal’s (INPI) website:
List of fees at the Industrial Property Office of Portugal’s (INPI)
If the page above does not load, try changing the language to ‘EN’, then retry. Though not as useful for understanding the fee structure, the official Portuguese language fee list is here.

Maintaining applications and granted patents

When do I have to pay annual fees in Portugal?

The annual fee must be paid from the 5th year in which the application has been filed. Subsequent annual fees are then payable. Annuity fees can be paid from 6 months in advance. For the third and fourth annual fees the applicant does not pay any fee, but must indicate to the Office that the patent should be renewed.

Can a lapsed patent be restored in Portugal?

In Portugal, an application for revalidation of can still be made within the period of one year beginning on the date of publication of the notice of expiry in the Industrial Property Bulletin. The revalidation requires treble the amount of the fees in arrears. The revalidation is done without prejudice to the rights of third parties who, meanwhile and in good faith, have started to use the invention.

Can I request an extension of the patent term in Portugal?

Yes. In Portugal the 20-year term for invention patents can be extended by supplementary protection certificates (SPCs) for medicinal and phytopharmaceutical products. There is a further extension of SPCs available for medicinal paediatric products. Standard EU Regulations apply.

How can I challenge a granted patent in Portugal?

Unfortunately, the opposition system does not apply to granted patents, only to published applications, and even so within a very short time limit after publication. The only way to a challenge a granted patent is through an invalidation procedure in court. A declaration of nullity or annulment may thus only result from a judicial decision. Nullity can however be invoked at any time by any interested party.

Is it mandatory to register a transfer or sub-licensing of a Portuguese patent?

A transfer, a license or a surrender of a Portuguese license must be registered in order to be enforceable. These are published in the patent bulletin. Restraining measures, collaterals for secured loans, seizures, impoundments, nullity or annulment actions are also subject to registration

Can computer software be patented in Portugal?

Computer programs as such cannot be patented, but they may be protected under Copyright Law. An invention containing a computer program may be patentable if there are inventive technical considerations involved, following closely the European Patent Office practice and case-law.

EP VALIDATION

Validating a granted European patent in Portugal

Must a granted European patent, in order to have effects in Portugal, be translated under Art. 65 EPC?

Yes, a translation must be filed 3 months after the date on which the mention of the grant or the decision to maintain the patent as amended, or a central limitation is published in the European Patent Bulletin. There is a one-month supplementary period subject to payment of a surcharge fee. The translation must be accompanied by a copy of the drawings, even where there is no textual matter. If there is simultaneous protection by a national patent, that fact must be brought to the attention of the Office.

What is the status on the accession of Portugal to the London Agreement?

Portugal has not acceded to the London Agreement and there is no indication that Portugal has currently plans to pursue this accession.

And what about the European Union unitary patent?

Portugal is a participant in the enhanced cooperation on the unitary patent protection and has signed the Agreement on a Unified Patent Court, as accordingly only Spain and Italy have ‘opted out’ of the current enhanced EU cooperation process.

What is the authentic text of the European patent application?

The Portuguese translation is considered authentic if, in the translated text, the application or European patent confers less protection than that conferred by the same application or patent in the language used in the file. Nevertheless, the applicant or proprietor of a European patent may, at any time, revise the translation, which only comes into effect when supplied to the National Industrial Property Office and made available to the public, though intervening serious use, in good faith, will be protected (Art. 70(4)(b) EPC).

Is there a provisional protection under Art. 67 EPC for a European patent application?

Yes, Portuguese law provides provisional protection after publication of the European application under Art. 67(1) EPC, said protection being equivalent to published national patent applications, provided that a translation of the claims, accompanied by a copy of the drawings, is filed. A notice is then published in the patent bulletin and, simultaneously, the translation together with the drawings, if any, are made available to the public. Provisional protection may be called upon even before publication, against a third party who has been notified of the submission of the application and received the details of the case.

Can computer software be patented in Portugal?

Computer programs as such cannot be patented, but they may be protected under Copyright Law. An invention containing a computer program may be patentable if there are inventive technical considerations involved, following closely the European Patent Office practice and case-law.

What are the rights conferred by the provisional protection?

The provisional protection provides the same protection as that of a granted patent, to be considered in the calculation of any compensation (Art. 5(1) CPI). Nevertheless, verdicts in suits brought up on the basis of provisional protection cannot be delivered before the final grant or refusal of the application, as the judicial case is suspended at the end of the submission of the arguments by the parties.

Information on double patenting via national and European rights

What are the rights conferred by the provisional protection?

No, there is an explicit provision in the law against double patenting via a European patent. A national patent, or utility model, for an invention for which a European patent valid in Portugal has been granted, shall be deemed void when the 9-month opposition time limit has expired with no opposition having been filed; or when the opposition is terminated and the European patent has been maintained. In the case of the national patent being granted after any of these dates, the national patent is deemed void. The collision only happens if the two rights have the same filing or priority date, and must be of the same inventor or with his consent.

Please note that the subsequent lapse or annulment of the European patent will not reinstate the forfeited national patent (Art. 88 CPI).

PCT NATIONAL PHASE

General information about PCT in Portugal

Is the national route open in terms of the Patent Cooperation Agreement?

Yes, Portugal is bound by Chapter II of the PCT, such that Portugal may be designated or elected for a national phase entry up to 30 months after the priority date. There is one additional month available for national phase entry subject to a surcharge. Currently, there is no reservation or declaration of incompatibilities.

Note that Portuguese is a PCT publication language for applications filed on or after January 1, 2009.

What types of protection are possible to obtain through this route?

Both patents and utility models – a utility model may be sought instead of or in addition to a national patent. In addition, or instead, an European patent covering Portugal can also be pursued through the European Patent Office.

Is there restoration of the right of priority as a receiving or designated Office?

Yes, both as receiving or designated Office. Note that when restoring a priority right, the request must be made within 2 months of the priority period. Again, the Office applies the “due care” criterion.

What will happen in terms of examination?

Applications for patents for invention are subject to substantive examination (novelty, inventive step and industrial applicability). The examiner will usually take into good consideration the PCT search and examination products.

Note that Portugal does not have post-grant opposition system like that of the European Patent Convention (EPC). There is an opposition period of two months after national entry, requiring written grounds and payment of a fee. Diligent watch is required as the 2-month period is obviously very short.

Utility model applications only undergo a formal verification, unless substantive examination is requested by the applicant or other interested party. Note that legal enforcement of the utility model requires a positive examination. An utility model will be considered inventive if it merely offers a practical or technical advantage for the manufacture or use of the product or process in question.

Are there any patent prosecution highway agreements (PPH)?

Yes, there are. Currently, PPH agreements exist for acceleration of examination for both national and PCT work products. These are also valid for national applications.The national PPH guidelines can be found here.

Portugal has joined the Global PPH Pilot whose members are Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, Russia, Spain, Sweden, United Kingdom, United States and the Nordic Patent Institute. Portugal also maintains a direct agreement with SIPO (China).

Can I file third-party observations in respect of a PCT application?

Not really. Portugal does not have a third-party observations system like that of the European Patent Convention (EPC). Although, during examination, any person may submit informal comments on the lack of conformity of an application with the provisions of the patent law, it is not legally clear how, or if at all, the case examiner will take these into consideration.

When do I have to pay annual fees? Is there a grace period?

Check out these answers in the area about maintaining national patents and applications.

Who can file patent translations for PCT national phase entry in Portugal?

The national law does not specify any particular requirement for this translation, however it seems legally sensible to follow the same requirements as for filing translations for European patent validations.

Note that for EP validations, it is required that, if the applicant or proprietor is not resident or established in Portugal, the responsibility of translations must be borne by an official industrial property agent (AOPI) or a by a representative accredited by the Industrial Property Office (INPI).

Portugal as a receiving office for a PCT patent application

The Office is competent under the PCT for nationals and residents of Portugal. The competent search and examination authority is the EPO.

Patent Cooperation Treaty (PCT) applications can be filed in Portuguese, French, English or German.

Applications filed in Portuguese should be followed within one month by a French, English or German translation. This can be done later with a surcharge according to standard PCT regulations.

Applications which are not filed in Portuguese must be followed within one month – unless a Portuguese priority is claimed – by a translation of the application including the drawings, even if these contain no text for translation.

Is there a provisional protection for PCT patent applications?

Yes, national law provides provisional protection after publication of the PCT application, said protection being equivalent to published national patent applications, provided that if PCT publication was not in Portuguese, a translation of the claims, accompanied by a copy of the drawings, is filed.

A notice is then published in the patent bulletin and, simultaneously, the translation together with the drawings, if any, is made available to the public.

Provisional protection may be called upon even before publication, against a third party who has been notified of the submission of the application and received the details of the case.

What are the rights conferred by the provisional protection?

The provisional protection provides the same protection as that of a granted patent, to be considered in the calculation of any compensation. Nevertheless, verdicts in suits brought up on the basis of provisional protection cannot be delivered before the final grant or refusal of the application, as the judicial case is suspended at the end of the submission of the arguments by the parties.

Information on double patenting via national and international rights

Can I protect the same invention by simultaneous national and PCT patents?

There is no provision in the law against double patenting via a PCT patent application and a national patent. Generally, you should assess very carefully if there is a real need for protection of an invention by two simultaneous rights.

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