Patents of Invention

– Decree-Law No. 97/99M on Industrial Property, 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 inventor's name, nationality and address.

Foreign applicants: any foreign applicant having no permanent residence or business office in Macao shall be treated based on the principle of reciprocity, and must appoint a Macao agent.

Definition of an invention: any invention, in any area of technology, pertaining to products or processes for obtaining products, substances or compositions, even if they involve a product composed of biological matter or which contains biological matter or a process which permits the production, processing or use of biological matter, shall be patentable provided that such inventions: (a) are novel; (b) involve an inventive step; and (c) have industrial applicability.

Exceptions and limitations to patentability: (1) the following shall not be patentable: (a) discoveries, as well as scientific theories and mathematical methods; (b) materials or substances already existing naturally and nuclear matter; (c) aesthetic creations; (d) schemes, rules and methods for performing mental acts, playing games or doing business as well as computer programs, as such; (e) presentation of information; (2) likewise, the following cannot be patented: (a) inventions, whose commercial exploitation would be illegal, contrary to public order, public health or morality; (b) methods for the surgical or therapeutic treatment of the human or animal body and methods of diagnosis applied to the human or animal body, excluding products, substances or compositions used in any of those methods; (c) plant varieties or animal breeds, as well as essentially biological processes for the production of plants or animals; (3) pursuant to subparagraph (2)(a) above, the following are specifically not patentable: (a) the human body, in the various stages of its formation and development, as well as the simple discovery of one of its elements, including the sequence or partial sequence of a gene; (b) human cloning processes; (c) human germinal genetic identity modification processes; (d) the use of human embryos for industrial or commercial purposes; (e) processes for the modification of the genetic identity of animals that can cause them suffering without any substantial medical benefit to mankind or animals, as well, as animals obtained by those processes. 

Biological processes and biological matter – definitions: (a) an essentially biological process for obtaining plant or animal matter shall be understood as any process that consists entirely of natural phenomena such as crossing or selection; (b) a microbiological process shall be understood as any process that uses microbiological matter, that involves the manipulation of microbiological matter or that produces microbiological matter; (c) biological matter shall be understood as any matter that contains genetic information and can reproduce itself or be reproduced in a biological system.

Novelty: an invention shall be considered novel when it is not known in the prior art. 

Novelty grace period: disclosure before the scientific community in the twelve months prior to the filing of the patent application.

Non-opposable disclosures: the following shall not prejudice the novelty of the invention: (a) disclosures to scientific societies, professional technical associations, or for the purpose of competitions, exhibitions and trade fairs in Macao and abroad which are official or officially recognized, if the application for the granting of the respective patent is filed in the territory within twelve months; (b) disclosures resulting from obvious abuse of the inventor or his successor in any capacity, or if improperly published by the IP Office.

Right of the inventor to be named: the inventor is entitled to be named. 

Unity of request and invention: (1) not more than one patent may be applied for in the same application and only one patent may be applied for an invention; (2) a plurality of inventions inter-related amongst themselves in such a way as to constitute a single general inventive concept shall be considered a single invention; (3) under the terms of the previous paragraph, it is permitted to include in the same application, specifically: (a) an independent claim for a product, an independent claim for a process especially evolved for the manufacture of that product and, moreover, an independent claim for a process especially evolved for a use of that product; (b) an independent claim for a process and an independent claim for a device or mechanism evolved especially to perform that process; (c) an independent claim for a product, an independent claim for a process and an independent claim for a device or mechanism especially devised to execute that process.

Multiple priorities: can be claimed for a patent application, with the priority deadlines being calculated from the date of the earliest priority.

Filing requirements for an application (to be handled by a Macao authorized agent):
1. Applicant’s name, nationality and address;
2. Inventor’s name, nationality and address;
3. The patent application must be filed in Chinese or Portuguese. (Note: at present all patent examinations are carried out by the China National Intellectual Property Administration (CNIPA), therefore, all the required documents must be submitted in the Chinese language);
4. A notarized power of attorney;
5. A title or a summary of the invention (max. 150 words or 400 characters);
6. A description of the subject matter of the invention, with drawings if necessary;
7. Claims and abstract;
8. When claiming a priority right, the country, date and number of the earlier application for each claim must be provided.

Notes: when appropriate, the following documents shall also be submitted: (a) documents proving the claimed priority right (should be submitted within three months from the Macao application date); (b) short declaration of the facts that justify the right to the patent title, when the applicant is not the inventor or the only inventor; (c) any translations that might be necessary, specifically in the light of the applicable regulations. The drawings should comprise of strictly illustrations in such numbers as are necessary to the understanding of the invention.

Electronic filing: not available.

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

Biotechnical inventions: should an invention claim refer to biological matter that is not accessible to the public and that cannot be described in the patent application in such a way as to allow it to be carried out by a person skilled in the art, or involving the use of matter of that type, the description will only be considered sufficient for the purpose of obtaining the patent, if: (a) the biological matter has been deposited, by the date of submission of the patent application, at a recognized depository institution, under the terms to be defined by a dispatch of the Chief Executive, and published in the Official Bulletin; (b) the patent application includes the relevant information available to the applicant regarding the characteristics of the deposited biological matter; (c) the patent application mentions the depository institution and the deposit number.

Examination

Formal examination: is carried out by the IP Office within a period of two months, after the submission of the application to check whether the formal requirements are met. Should the application be short of any of the required documents, the applicant must submit the missing elements within two months after being notified, or four months should no notification be sent to the applicant. This period of time can be extended for a further two months, and the non-compliance with the formal requirements will lead to the refusal of the patent application with publication in the Official Gazette.

Expedited examination: is not available.

Voluntary amendments: it is possible to proceed only once with a voluntary amendment, prior to the filing of the application for the request of examination. Once in receipt of the examination official report, it is possible to proceed only once with a further amendment.

Notice of disclosure to the public: once eighteen months have elapsed from the date of submission of the application or, if a priority right has been claimed, from the claimed priority date, the disclosure notice is published in the Official Gazette and the application particulars will be available to the public from that date onwards.

Opposition: from the publication of the disclosure notice until the date when the patent is granted, any third party may file oppositions to the patentability of the invention. The applicant will be notified of such oppositions, and may reply within four months counted from the notification date.

Substantive examination: within seven years counted from the patent application filing date, the applicant must submit a request of examination to be conducted by the designated entity, the China National Intellectual Property Administration (CNIPA). If the applicant fails to submit a request of examination, a third party may request one.

Examination report request filed by a third party: starting from the date of disclosure to the public of the patent application, any third party may file a request of examination, if the applicant has not done so within seven years from the date of submission of the patent application. 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.

Rejection of an examination report request: the request for an examination report shall be rejected when: (a) it is not accompanied by proof of payment of the examination fee; (b) it does not meet other requirements stipulated in the present Statute; (c) the patent application is in the process of rectification.

Divisional applications: the application may be divided by option of the applicant or following a legal action within four months after receipt of the substantive examination report.

Protection

Notification of grant or refusal of the patent: the granting or refusal of the patent shall be notified and published in the Official Gazette. After one month from the publication date of the granting of the patent, the Letters Patent will be issued if no appeal has been filed by any third party.

Scope of protection: shall be determined by the content of the claims, the description and the drawings serving for interpretation purposes under the terms set therein. 

Reversal of the burden of proof: if the subject matter of a patent is a process for manufacturing a new product, the same product manufactured by a third party shall, unless proven to the contrary, be deemed to be manufactured by the patented process. 

Beginning of protection: from the filing date, however, the exclusive right is only protected after the granting date.

Duration: twenty years from the date of application, renewable from the fourth year onwards with the payment of annuities, which should be paid in the last six months of the current validity. 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 patent is possible with the triple payment of the official fee, within one year from the term of current validity.

User’s rights: the patent allows the owner the exclusive right to use the invention. The rights granted by the patent may not exceed the scope defined by the claims and the patent shall be granted with no guarantee as to the accuracy of the descriptions and its validity may not be presumed by virtue of the fact that the respective certificate was granted. If the subject matter of a patent is a process for manufacturing a new product, any product manufactured by a third party using the process, shall be deemed to be manufactured by the patented process, unless proved to the contrary. 

Complementary certificate for the protection of medicines and phyto-pharmaceutical products: the owner of a patent invention may extend the protection for a period of not more than seven years. The application must be attached to a copy of the first authorization to market the product in Macao. A summary of the characteristics of the product must also be included. 

Marking: not compulsory. 

Use: compulsory after a grace period of four years from the filing date, or three years from the date of granting, whichever is the longest. 

Expropriation or compulsory licenses: in case it is not or is inadequately exploited, any patent may, on payment of compensation, be expropriated, or subject to a mandatory license if the public interest requires it.

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 a 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.

Extension to Macao

Since March 2004, it is possible to file an application for an extension of a Chinese patent application or a Chinese patent to Macao.

1. Filing requirements when extending a Chinese patent application (to be handled by a Macao resident agent):
1. A notarized power of attorney;
2. A certified copy of the official filing receipt of the application issued by the China National Intellectual Property Administration (CNIPA);
3. Patent specification from CNIPA.

2. Filing requirements when extending a Chinese patent (to be handled by a Macao resident agent):
1. A notarized power of attorney;
2. Applicant's name and address, inventor's name and address;
3. Patent specification from CNIPA;
4. A certified copy of the extract from CNIPA.

Note: all the above documents under "2. Filing requirements" must be submitted to the IP Office within three months from the date of publication of the granting of the patent. The payment of annuities will be due after four years of the filing date in China. However, the fees are only due after the extension to Macao.

Transitional Provisions

The Macao Industrial Property Code has been in effect since June 7, 2000. Patents are valid for twenty years from the date of application. Following the Portuguese Industrial Property Code, which was in force until June 6, 2000, patents are valid for twenty years from the date of application.