Macau has a peculiar system for protection of patents and applicants should pay attention to deadlines.
The Industrial Property (IP) Laws of the Macau Special Administrative Region have a great influence from the Portuguese IP Law and there are still Portuguese IP rights that were extended from Portugal to Macau and that are still in force today. The system for trademarks is in line with all the major IP systems that most applicants are used to.
However, the patent system has a peculiar set of characteristics that might confuse patent owners when protection is sought. We will cover the fundamentals of the international IP treaties that apply in the territory as well as the local proceedings that are at the disposal of Patent owners.
Contrary to what happens in mainland China and Hong Kong, Macau does not belong to the Patent Cooperation Treaty (PCT), which means that foreign applicants are not able to enter the national phase of the international patent proceedings in Macau. Thus, the amount of time available for patent owners to protect their patents is considerably reduced as PCT provides 18 additional months on top of the term of the priority claim of 12 months that is provided by the Paris Convention.
Macau is also not a member of the Paris Convention that allows patent owners to claim priority of prior foreign applications. However, the Paris Convention is fully applicable in the territory. Portugal is one of the original signatories of the Paris Convention (1883) and its protection was extended to the territory prior to the transfer of sovereignty. With the transfer of sovereignty, China issued a notification to WIPO clarifying that the country would be responsible for the territory’s international obligations and, as such, the Paris Convention is applicable to the territory from December 20th, 1999.
Patent owners are thus fully able to file applications claiming Paris Convention priority within 12 months of the initial foreign application.
Additionally, owners of Chinese patents are able to extend their patent protection to Macau, resulting from the Cooperation Agreement between the Macau IP Office and the Chinese mainland counterpart.
The required documents will vary depending on whether the patent is still pending or was already granted. When the patent is finally granted, owners will have to file additional original documents, namely the certified copy of the extracts of the Chinese Patent Office and the certified copy of the Chinese Patent issued by the Chinese Patent Office, within 3 months of the date of publication of the granting decision in China. This date is strictly enforced by the Macau IP Office and failure to do so will result in the rejection of the patent extension. The short date is usually burdensome to applicants, so IP attorneys should pay careful attention to the same in order to have the patent successfully protected in Macau.
Interestingly, while the above mentioned extension of rights from Mainland China is the most common procedure in Macau, it is also possible to extend protection of granted European Patents, using a similar procedure that is in fact the standard as mentioned in the Intellectual Property Law of Macau (article 129, et seq.).
Likewise, 3 months following the publication of the notice of granting of the patent in the European Patent Bulletin, the patent owner should provide to the Macau IP Office a translation to Chinese or Portuguese of the title or short title briefly describing the subject matter of the invention, the description of the subject matter of the invention and the claims.
The extended patents have the same legal effect of a granted patent in Macau and are genetically linked, i.e., if the European patent is declared null or cancelled, the same will happen to the Macau extension. Annuities shall be paid in connection to both the European Patent and locally.
Patent owners should be aware of the time constrains that should be strictly met in order to protect foreign patents in Macau but should also keep in mind that using these procedures is likely to fast-track the granting of such rights in the territory in less than 6 months.