Industrial Designs and Models

– Decree-Law No. 97/99M, in force since June 6, 2000.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO).
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille).
– WTO’s TRIPS Agreement, with effect from December 20, 1999.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, with effect from December 20, 1999.

Filing

Applicant: must be any person, or corporate body either an individual or a group, provide their name, nationality and address, along with, if different from the applicant, the inventor’s name, nationality and address. 

Definition: to obtain protection of a design or a model, which must be novel and unique, the subject matter shall be limited to creations whose appearance represents a product in whole or in part by virtue of such characteristics as lines, contours, colors, forms, textures and/or the materials used in the product itself and/or its ornamentation and which meet the requirements set forth in the present section. The law defines a product as any industrial or crafted article, including the components for assembling a complex product, packaging, presentation elements, graphic symbols and wording, but excluding computer programs. 

Novelty: must be novel and unique. The industrial model or design is novel if no identical model or design has been published within or outside the territory. Models or designs that differ only in insignificant details shall be considered identical. 

Non-opposable disclosures: do not prejudice the novelty of the creation if the disclosure has been made by the creator, successor or by a third party following information or measures taken by the creator or successor. Neither does disclosure in international exhibitions and trade fairs official or officially recognized by any member of WTO within twelve months before the date of application or the date of priority and if the applicant within three months after the application proves that the creation has been disclosed under these circumstances. Nor will it prejudice any revelation from any obvious abuse from the creator or successors.

Exceptions to protection: those models having a form resulting exclusively from their technical functions. 

Series application: possible if the industrial models or designs possess the same preponderant distinctive characteristics. It should be noted that designs/models that constitute the various integrated parts to form a whole should be included in a single registration. Designs/models that possess the same characteristics, up to a maximum of ten, in such a way that they constitute a whole group of inter-related objects that are necessary for the use or application, may be included in a single registration. If the application is not combined with the unity requirement, the applicant by his initiative or following the decision of the designated entity may divide the application presenting one or more divisible application.

The divisible application will be limited to the protection conferred on the initial application and benefit for the priority date of the initial application or the corresponding priority right. 

Prior protection: the designs/models of textiles or clothing can have prior protection for three months by the deposit of samples or reproductions, before the submission of the application. This confers a priority right.

Filing requirements for an application (to be sent to resident agent):
1. An application, written in one of the official languages (Chinese and Portuguese), with the applicant’s name, nationality and address and/or the creator’s name, nationality and address;
2. A notarized power of attorney;
3. A title or a summary of the specifications or the purpose for which the design or model is intended (max. 150 words or 400 characters);
4. A description including the geometrical or ornamental details;
5. A reproduction, along with drawings (showing different perspectives of the model) or photographs. If claiming a combination of colors, the drawings or pictures should show the colors claimed;
6. Priority claim, if applicable (indicating the country, the date and number of the earlier application) – the priority documents should be submitted within three months of the application date).

Note: the following document should also be submitted: a description of the innovative characteristics attributed to the subject matter of the model or design applied for. 

Electronic filing: not available.

Electronic signatures: are not accepted (only wet signatures).

Examination

Preliminary formal examination: carried out by the IP Office within one month of the application being filed to establish that all the necessary documents are present. If the application is short of any of the documents required, then the applicant must submit the missing elements within three months after being notified. Otherwise, the design/model application will be refused and the refusal published in the Official Gazette. This can be extended for a further one month.

Publication: in the Official Gazette, twelve months from the date of submission of the request or from the date a priority right was claimed. The disclosure can be made public before the end of this period if requested by the applicant at least two months after the initial submission and all the documents are correct. 

Opposition: after the publication of the disclosure notice and until the granting of the design/model, any third party can oppose the registration of the design/model. The applicant will be requested to reply within two months.

Substantive examination: within thirty months after the submission of the main or divided request, the applicant shall either present a request of examination report or an examination report compiled by one of the designated entities (European Patent Office or others). If the applicant fails to submit an examination report, a third party may request one. The applicant shall be notified of the request of the third party, together with a copy of the examination report, and apply modifications to the claims description and/or drawings only once. 

Granting, partial granting or refusal: the applicant is notified and the decision is published in the Official Gazette.

Protection

Duration: five years from the date of the application.

Renewals: the renewal takes place upon payment of annuities from the sixth year onwards, up to a maximum of twenty-five years. The request for renewal must be filed during the last six months of current validity of the registration. 

Grace period for renewals: after the term of the current validity lapses, it is possible to pay the official fee plus a fine within six months from the date of current validity and within one year after the term of the current validity, revival of the design/model is possible with a payment of triple the official fee.

User’s rights: the validity of the industrial design or model allows the registered owner the exclusive right to use and to prohibit the use by a third party without his consent. 

Use: includes the provision and distribution in the market, import, export or use of a product into which the industrial model or design is incorporated, or to which it is applied, as well as the storage of that product for the same ends. 

Marking: not compulsory. 

Annulment: suits should be filed before the General Court within one year of the appellant learning of the fact on which the suit is based. 

Assignments, licenses and changes of identity or address: the following details and documents are required: the registration certificate (if it is not an application), and the original or certified copy of the deed or official certificate of the changes to be recorded, along with power of attorney. It is not compulsory to have these recorded in the IP Office. However, for it to be effective to a third party, and to prove the use, it is recommended to have the assignments, licenses and changes recorded at the Registrar for optimal protection of the right.

Transitional Provisions

Under the Macau Industrial Property Code, with effect from March 14, 2005, industrial models and designs should be renewed yearly from the sixth year onwards, up to a maximum of twenty-five years.

The Portuguese Industrial Property Code, recognized in Macau until June 6, 2000, states that industrial models and designs are valid for twenty-five years from the date of application. But if granted before June 1, 1995, they are valid for twenty-five years from the date of the first payment after June 1, 1995 or if the application was before June 1, 1995 and approved after this date, they are valid for twenty-five years from the date of approval. It must be noted that the term for protection of industrial models and designs extended from Portugal to Macau is tied to the expiry date of the Portuguese industrial models and designs and therefore of the same duration. However, quinquenniums must be paid in Macau on the same due date as the Portuguese payment to maintain their validity in Macau.