New Portuguese Industrial Property Code - Practical Guide

The new Portuguese Industrial Property Code was published on December 10th last year. After six months have passed we reiterate some of the main changes.

Patents | Utility Models | Drawings or Models

• Ownership of inventions carried out in the context of employment on universities and within a public or private entity belongs to that entity. However, such ownership may be transferred to the inventor. The inventor has the right to participate in the economic benefits of the invention although these do not have a salary nature.
• Searches in proceedings of Provisional Patent Applications must be carried out by the Office within ten (10) months.
• New matter and amendments relating to technical matters which go beyond the request must be disregarded, and the applicant must be notified in order to proceed with its adjustment.
• Provisions for the indirect patent infringement regime are included in the new legal frame.
• It is no longer necessary on the part of the applicant to challenge the titles or request for cancellation of infringing patents with an posterior application date - instead of a posterior priority date - so that it can oppose to all acts that constitute a violation of the patent.
• Utility model applications without substantive examination are eliminated.
• The substantive examination for provisional utility models becomes mandatory and must be promoted by INPI.
• Registrations of designs may be partially renewed.
• The declaration of nullity and cancellation of registered designs may be issued by the Office (INPI), provided that their invocation does not result from a counterclaim, since in this last case it will be ruled in the Intellectual Property Court.

Trademarks

• Marks no longer need to be represented graphically as long as it is possible to clearly and precisely determine their object of protection.
• Divisional applications and registrations are allowed.
• Trademark and logotype registration fees are, once again, due.
• Defendant can now claim, in the opposition, the lack of serious use of the mark. It is up to the opponent to prove serious use, or justified reasoning for the lack of use, otherwise the opposition will be dismissed.
• A new kind of opposition is created for the absolute grounds for refusal: the observation of third parties.

• New absolute grounds for refusal are provisioned, in particular, trademarks which do not respect the protection of designations of origin and geographical indications, traditional protected terms for wines, traditional specialties guaranteed or the designation of an earlier plant variety.
• After publication, a trade mark application may be amended only in the form of a limitation on the list of goods or services and minor corrections which do not disturb the essential character of the trade mark.
• The legal regime of collective marks, certification or guarantee marks is densified.
• Trademarks registered in bad faith are ground for absolute refusal or nullity.
• The validity of a mark is now counted from the date of filing of the application instead from the date of granting.

Trade Secrets and Know How Protection

• Separation of the regime regarding the protection of know-how and trade secrets not being necessary to prove unfair competition.
• Imposition of limits on the protection of trade secrets, the new law implementing the circumstances in which its acquisition, use and disclosure constitute an unlawful act.
• Providing the safeguarding of confidentiality of commercial secrets in legal proceedings, despite being able to yield before the application of the principle of public hearing.

Voluntary Arbitration

• Finally, the Decree-Law that approved the new code changes the law no. 62/2011 of December 12, namely, litigation emerging from the invocation of Industrial Property rights, including the precautionary procedures, related to reference medicines that are now subject to voluntary arbitration, thus revoking the previous regime, which submitted such disputes to the necessary arbitration.