Industrial Property Code – Inventions

The review of the Industrial Property Laws undertaken by the Portuguese Government, whose main thrust was the alteration of the legal conditions in which IP rights are defined, perceived and exercised in Portugal either through its coordination with international rules notably EUIPO rules or the transposition into Portuguese laws of EU Directives applicable to IP aiming to strengthen the use and protection of industrial property in the country. The new law also improve the conditions for companies to foster innovation on the national and European markets. This aim was reached by the revocation of the existing IP law and its replacement by a new Industrial Property Code. With this objective the following alterations to the Inventions’ regime are highlighted:

– It is clarified that any rights arising out of patents and utility models may only be transferred to third parties in their entirety.

– It is also clarified that, to ascertain inventive step, due consideration is not given to the content of the utility models and patent applications requested on a date prior to that of the patent application, to take effect in Portugal and not published yet, provided that they are published on the same date or on a date subsequent to that of the new patent application.

– It is specifically envisaged that an insufficient, unclear description of the invention constitutes ground to refuse the patent.

– All litigation arising out of the claiming of industrial property rights, including injunction proceedings, related with original medicines and generic medicines (both with regard to patents and supplementary protection certificates) cease to be subject to mandatory arbitration.

Hence, whilst, under the terms of the previous regime, the patentee interested in claiming its industrial property right would have the term of 30 days, calculated as from the publication of the application for a new Marketing Authorisation (MA) for the generic product, to start the arbitration, it may now, within the same timeframe, claim its IP right with the Intellectual Property Court or, in the event of an agreement between the parties, with the institutionalised court of arbitration or make a request for the submission of litigation to non-institutionalised arbitration.

It is now also specifically foreseen in the IP law that patent invalidity may be claimed and decided in the arbitration procedure, although only for inter-party effect (in other words, the MA applicant may claim by way of a peremptory exception, the invalidity of the patent or SPC, though the efficacy of the decision made shall remain limited to the arbitration procedure).

– End of double national and European patenting prohibition. The same invention thus starts being simultaneously protected in both ways.

– A special regime is introduced pertaining to the ownership of inventions by administrative agents and employees.

Any inventions conceived by employees or agents of public collective bodies who are involved in research activities shall be owned by the latter, with the inventor being entitled to an economic share deriving from the exploitation or assignment of the patent rights. Invention ownership may be transferred to the inventor and the corporate body may reserve the right to hold a non-exclusive, non-transferable and free-of-charge operating license.

As regards certain aspects of this regime, it is foreseen that, if the parties fail to reach an agreement, the matter shall be settled by arbitration.

– More detailed definition of the procedures pertaining to the supplementary protection certificates.

– Lengthening in timeframes to answer INPI notifications.

– Specific provision to the effect that the patent and utility model applications cannot be altered so as to contain technical matter that exceeds its content as presented on the application date.

– Extension of the scope of the rights bestowed by the patent, also foreseeing new limitations to these rights.

The scope of the rights bestowed upon the patent holder is lengthy, with the new law thereafter foreseeing that the patent holder is entitled to prevent the offer or provision of the resources to implement the patent, in cases in which there is an awareness that said resources are appropriate and intended for said implementation.

On the other hand, new restrictions are foreseen on the rights bestowed by the patent and it is envisaged that the latter will not encompass:

  1. The use of biological material for the purposes of cultivating or discovering and developing new plant varieties;
  2. The use by a farmer of the product of his harvest for reproduction or multiplication purposes in his farm, provided that the plant reproduction material has been sold or marketed in some other way by the patent holder, or with his consent, to the farmer for agricultural purposes;
  3. The use by a farmer, for agricultural purposes, of protected animals, provided that the breeding stock or other animal reproduction material have been sold or marketed in some other way to the farmer by the patent holder or with his consent;
  4. The acts and use of the information obtained under the terms allowed by the legislation in force as regards the legal protection of computer programmes, namely by the respective provisions pertaining to decompilation and interoperability.

– INPI shall henceforth have the competence to, at the request of the party concerned, correct the term of validity of a supplementary protection certificate whenever the date is incorrect, and to, on its own initiative, i) correct the term of validity of a supplementary protection certificate whenever it verifies that there has been an error in the calculation of said period; ii) declare the certificate null and void if the basic patent has expired before the end of its term of validity or if the basic patent has been cancelled.

– Elimination of the regime which does away with the need to examine the utility models.

Under the terms of the regime in force, the examination concerning novelty, inventive step and industrial applicability was only carried out when it was requested by the applicant or by any interested party. Hence, as no examination was requested and if there is no opposition, the utility model was granted on a provisional basis and its validity ceases when the examination was requested.

According with the new legal provisions the Patent and Trademark Office must then carry out said examination once the claims’ submission deadline has elapsed or after the submission of the last document in the administrative procedure.

– Provision regarding new limitations to the utility models.

Under the terms of the alteration made, any inventions pertaining to food products or processes for the preparation, obtaining or making of said products shall also henceforth be excluded from protection as a utility model.

– Clarification of the unity of invention regime.

It is specifically made clear that the applicant for the patent or utility model may – at its own initiative or further to an examination which reveals that the application fails to respect the unity of invention – divide the application up into several applications, with each of them maintaining the initial application date.

The divisional application may only contain elements which do not exceed the content of the initial application.