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), since February 4, 1969. (Note: This Convention continues to apply to the territory of the Special Administrative Region of Macao after December 20, 1999.)
– 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 natural or legal person, individual or legal entity, and must provide their name, nationality and address, along with, if different from the applicant, the creator'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: does not prejudice the novelty of the creation if the disclosure has been made by the creator, its 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 cause prejudice any disclosure from any obvious abuse from the creator or its 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 design/model 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 by submitting one or more divisional applications.

The divisional application will be limited to the protection conferred on the initial application and it will benefit of 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 handled by a Macao authorized agent):
1. An application, written in one of the official languages (Chinese or 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 must be submitted within three months from the Macao application filing 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: available.

Electronic signatures: accepted.

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 were submitted. Should the application be short of any of the required documents, the applicant will be notified to rectify the application within three months from the notification date. This time period can be extended for another month. The non-compliance with the formal requirements will lead to the refusal of the application, and the refusal will be published in the Official Gazette.

Publication: in the Official Gazette, twelve months from the application filing date or from priority date, if a priority right was claimed. The disclosure can be made public before the end of this period providing that is requested by the applicant, at least two months after the application filing date and that all the formal requirements are fulfilled.

Opposition: from the publication of the disclosure notice until the date when the design/model is granted, any third party may file oppositions. The applicant will be notified of such oppositions, and may reply within two months counted from the notification date.

Substantive examination: within thirty months from the application filing date the applicant must submit a request of examination to be conducted by the designated entity. If the applicant fails to submit a request of examination, a third party may request one. The applicant shall be notified of a request of examination filed by a third party, together with a copy of the examination report, and may amend 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 renewal application shall be submitted within the last six months of the current validity period.

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

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 purpose.

Marking: not compulsory. 

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

Assignments, licenses and changes of identity or address: the following details and documents are required: applicant's name and address, original or certified and notarized copy of the deed or official certificate of the changes to be recorded and the notarized power of attorney. It is not compulsory to have the above recorded in the IP Office. However, to be effective towards third parties and to prove the use, it is recommended to have the assignments, licenses and any relevant alterations recorded at the Register for optimal protection of the right.

Transitional Provisions

Under the Macao 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, in force in Macao until June 6, 2000, states that industrial models and designs are valid for twenty-five years from the date of application. However, 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 filed before June 1, 1995 and approved after this date, the designs/models 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 Macao 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 Macao on the same due date as the Portuguese payment to maintain the validity in Macao.