Utility 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. 

Subject of protection: only inventions that so alter a subject matter as to give it a configuration, structure, mechanism or disposition that increases its utility or improves the advantage that can be derived therefrom can be protected as utility models. 

Patentability: a utility model shall meet the patentability requirements foreseen in Section II. “Patents of Invention“, with the exception of those which are not compatible with their nature.

Conversion: the applicant has the option, simultaneously or successively, of applying for an invention patent or a utility model for an invention that can be protected as a utility model. The utility model shall cease to be effective once an invention patent has been granted for the same invention.

Filing requirements for an application (to be sent to resident agent):
1. Applicant’s name, nationality and address;
2. Inventor’s name, nationality and address;
3. A notarized power of attorney;
4. A title or a summary of the invention (max. 400 characters);
5. A description of the subject matter and specification of the invention, with drawings if necessary;
6. Claims of what is considered novel and what characterizes the invention;
7. Abstract of the invention;
8. Mention of the priority right, if claimed (country, date and number of the presentation of each claim) – the priority documents may be submitted within three months of the application date.

Electronic filing: not available.

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

Examination, Granting and Protection

Preliminary formal examination: carried out by the China National Intellectual Property Administration (CNIPA) within two months 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 four months after being notified. This can be extended for a further two months, otherwise the utility model will be refused and the refusal published in the Official Gazette.

Disclosure: notice of public disclosure in the Official Gazette, eighteen 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 utility model, any third party can oppose the patentability of the utility model. The applicant will be requested to reply within four months.

Substantive examination: within four years, 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 and a month later, the utility model prospectus is published. 

Assignments, licenses and changes of identity or address: the following details and documents are required: applicant’s name and address, registration certificate (if it is not an application), 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 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.

Duration and renewal: annuities must be paid from the third year onwards, up to a maximum of ten years. The renewal request shall be submitted within the last six months of the current validity period. 

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

User’s rights: the utility model allows the owner the exclusive right to use the invention. The rights granted by the utility model may not exceed the scope defined for the claims and the utility model 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. 

Marking: not compulsory.

Transitional Provisions

Under the Macau Industrial Property Code, in effect since July 7, 2000, utility models are valid for six years from the date of application, renewable for two additional periods of two years for a maximum of ten years.

The Portuguese Industrial Property Code, which was used up to June 6, 2000, states that the utility models are valid for fifteen years from the date of application. But if approved before June 1, 1995, the validity is for fifteen years from the date the first payment is due after June 1, 1995. However, if the applications were filed before June 1, 1995, and approved after this date, they are valid for fifteen years from the date of approval. It must be noted however, that the term for the protection of the utility models extended from Portugal to Macau before July 7, 2000, is tied to the expiry date of the Portuguese utility model and therefore has the same duration. However, annuities must be paid in Macau on the same due date as the Portuguese annuity to maintain their validity in Macau.