Patents of Invention

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since February 4, 1969.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 27, 1975.
– Strasbourg Agreement Concerning the International Patent Classification, since May 1, 1979.
– European Patent Convention, since January 1, 1992.
– Patent Cooperation Treaty (PCT), since November 24, 1992.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms, since October 16, 1997.
– Agreement on a Unified Patent Court (UPCA), ratified on August 28, 2015.

Filing

Applicant: the inventor or his successors; the employer if the invention has been made under an employment agreement. 

Applicants not living in the country: may act before the Portuguese Institute of Industrial Property, provided that they mention an address in Portugal, an e-mail address, or a fax number. If the representative is not a Portuguese official industrial property agent, a lawyer or a solicitor, he should present a power of attorney with powers for each filing. 

Protection of patents by foreign inventors: the same as for nationals, provided the country concerned is a member State of the Paris Convention or provided the inventor is domiciled or commercially established in such a country. For any other foreigner inventors, the protection is made on a basis of reciprocity, if no special Convention exists between Portugal and the country concerned. 

Naming of inventor: if the applicant is not the inventor, the latter must be mentioned as such in the application and in the Letters Patent. 

Notion of invention: to be patentable, an invention must be new, involve an inventive step and be susceptible of industrial application, even when the invention bears on a product made of biological material or which contains biological material or on a process which enables to produce, treat or use any biological material. Also patentable are the processes which are novel for obtaining products, substances or already known compositions.

Novelty: inventions which do not form part of the state of the art, which comprises everything that inside or outside the country has been made available to the public before the date of filing of the patent application by means of description, use or any other means.

Exceptions to protection (limitations as to patentable subject matter): (a) discoveries, as well as scientific theories and mathematical methods; (b) materials or substances already existing in nature and nuclear materials; (c) aesthetic creations; (d) schemes, principles and methods for performing intellectual acts, in playing games or in the field of business activities, as well as in programs for computers; (e) presentation of information. (Limitations with regard to patents): inventions for which the commercial exploitation would be contrary to law, public order, public health or accepted principles of morality are excluded from patentability, namely: (a) the cloning processes of human beings; (b) the process of modification of the germinal genetic identity of a human being; (c) the use of human embryos for industrial or commercial purposes; (d) the process of modifying the genetic identity of animals, which may cause them suffering without substantial use for man or animal, as well as the animals obtained by such processes. 

Not patentable: (a) the human body, in the several stages of its constitution and development, as well as the simple discoveries of one of these elements, including sequences or a partial sequence of a gene; (b) vegetable variants or animal races, as well as the essentially biological process for obtaining vegetables or animals; (c) surgical or therapeutic methods for treating the human or animal body and diagnostic methods used on the human or animal body, though products, substances or compositions used in any of these methods may be patented.

Types of protection: patents of invention.

Provisional protection: it is possible to file a provisional patent application, having a twelve-month term to transform it into a final (non-provisional) patent application, by filing the required documentation. If these documents are not filed, the PPP will be considered withdrawn. This provisional application can be filed in Portuguese or English and requires a document describing the object under application, so that any person skilled in the art may carry out the invention. This application cannot claim priority from a previous application; a (non-binding) preliminary search report will be issued within the twelve months upon request of the applicant. Further, only after its transformation into a final patent application, will there be an examination regarding the form and limitations (former formal examination). 

Confirmation patents: none.

Priorities: multiple and partial priorities may be claimed according to the Paris Convention. A declaration in which the date and country of the prior application are specified must be filed at the Portuguese Institute of Industrial Property.

Territory covered: patents are valid in Portugal (including the Azores and Madeira Islands).

Filing requirements for an application (to be sent to resident agent):
1. Name, firm or company name, nationality, domicile or place of business of the applicant;
2. Title synthesizing the subject matter of the invention;
3. Name and country of residence of the inventor, if the applicant is not the inventor;
4. The country where the first application was filed, date and number of that filing, in case the applicant wishes to claim priority;
5. Power of attorney if the representative is not an official industrial property agent, lawyer or solicitor. No power of attorney is needed if the representative holds said capacities.

Documents to be filed:
(a) Claims of what is considered as novel and characteristic of the invention. (In Portugal the claims must obey to a two-part claim type, having the expression “characterized by” separating a preamble containing the prior art features from a characterizing part containing the new and inventive features);
(b) Description of the subject matter of the invention;
(c) Drawings necessary for the perfect understanding of the invention;
(d) Abstract of the invention.

Notes: the Portuguese Institute of Industrial Property may request from those claiming a priority right a duly authenticated copy of the first application, description, drawings and other elements. The priority will not be recognized if the requested documents are not presented.

If the patent refers to a biologically reproducible material which cannot be disclosed in such a way as to enable an expert to work the invention, and which is not open to public inspection, the application must be completed with the deposit of that material before a duly authorized authority.

Electronic filing: available. 

Electronic signatures: are accepted.

PCT applications: time limit for entering the national phase under both PCT Chapters I and II: 30 months.

Examination

Amendments, alterations or corrections of applications: can be requested before the examination decision. 

Right of prior user: no recognition of any right of prior user. 

Disputes about ownership: the rights of a third party, based on priority or on other legal grounds, can be invoked in opposition proceedings against the grant of the patent or, after grant, in court. 

Dispute about novelty: the novelty of the invention can be discussed in opposition proceedings and in court, in the latter case only if the patent has already been granted. 

Examination: as to form and limitations concerning the object of the patent and as to whether the invention satisfies all legal requirements for the grant.

Division: possible according to Paris Convention. 

Opposition to application filed: within two months from the date of publication of the application in the Bulletin; any person considering himself prejudiced by the grant of the patent is entitled to file an opposition. These proceedings can be continued by the applicant by filing a reply after notification.

Appeal: any of the parties can appeal to the Intellectual Property Court or at ARBITRARE (Arbitration Centre for Industrial Property, Domain Names, Companies and Designations) against unfavorable decisions of the Portuguese Institute of Industrial Property, within two months from the date of publication of the notice of refusal/grant, and subsequently from the decision of that Court to the Lisbon Court of Appeals. 

Grounds for opposition: (a) lack of novelty, inventive step and industrial applicability of the invention; (b) non-compliance of any other legal requirements (formal requirements and limitations and exclusions from patentability); (c) insufficiency of disclosure and/or lack of clarity; (d) no right to ownership; or (e) the acknowledgement that the applicant intends to make unfair competition or that this is possible irrespective of the applicant's intention. 

Provisional protection: granted by the patent application from the date of publication of the application, and that is equivalent to the protection conferred by the grant of the patent right (only for indemnity purposes). 

Publication: a notice of the application, as filed with the Portuguese Institute of Industrial Property, with a transcription of the abstract is published in the Bulletin; this publication being made after a preliminary examination. Full copies of claims, descriptions and drawings can be requested after the publication of the abstract. The application can only be published eighteen months after the filing of the application or after the priority date, unless a request is made for an advanced publication.

Granting, Protection

Delivery of document: the patent is granted if no reason for refusal is found by the Examiner. The grant is published in the Official Bulletin. The Letters Patent shall only be delivered to the interested party upon request. 

Duration of protection: twenty years from the patent application or provisional patent application date (whenever a transformation into a final patent application occurs). 

Extension of protection: Supplementary Protection Certificates for medicine and plant protection products, pursuant to EC Regulations No. 469/2009 and 1610/96 respectively. Those products must undergo an authorization procedure before they can be put on the market. The duration of these Certificates, that cannot be longer than five years, depends on the date of the first authorization for the introduction into the EC market. The Industrial Property Code foresees the administrative procedural rules for the issuance of the Supplementary Certificates of Protection, namely the application requirements and the fees to be paid. The Portuguese IP Code further foresees an extension of the Supplementary Protection Certificate in the case of medicinal products for pediatric use. The request for a pediatric extension may be submitted to the Portuguese Institute of Industrial Property at the time of submission of a request for a Supplementary Protection Certificate, while it is pending or, if a certificate has already been granted, up to two years before it expires.

Annuities: the two first ones must be paid with the application; the following ones within six months prior to the respective maturities, even if the patent has not yet been granted, with a grace period of six months subject to a surtax; reinstatement of the patent is possible within one year after the date of publication of the forfeiture decision, if not infringing a third party’s possible rights.

Marking of patented goods and text of marking: not compulsory, but it is possible and advisable to mark goods with the word “patenteado”, “patente No.” or “Pat. No.”. 

Amendment of issued patents: a patentee may request to the Portuguese Institute of Industrial Property, on payment of a fee, to limit the scope of protection of the invention by altering the claims. Also, any alteration or correction that does not affect the essential elements or characteristics of the patent may be authorized in the same case. 

Assignments: applications and patents can be assigned totally or partially for the whole of their duration or for a shorter period, to be used in the whole national territory or part of same. The assignment must be recorded with the Portuguese Institute of Industrial Property upon filing of the assignment deed. 

License for exploitation: licenses can be granted by the patentee for the total or partial exploitation of the patent, for the whole of its duration or part of same, in the whole Portuguese territory or part of same. The license must be recorded with the Portuguese Institute of Industrial Property.

Working: the holder of a patent has a duty to exploit the patented invention, directly or through any person under his authorization, and to commercialize the results obtained in such a way as to satisfy the needs of the national market. The exploitation should be started within the term of four years from the date of the application for the patent, or within three years from the date of the grant, whichever period is longer.

Compulsory licenses: may be granted in case of (a) failure to exploit or insufficient exploitation of a patented invention; (b) dependent patents; (c) motives of public interest. A compulsory license may also be granted if the holder, during three consecutive years and without just reason or legal basis, ceases to carry out its exploitation. It is deemed as just motive the objective difficulties of technical or juridical nature, irrespective of the will and the situation of the patent holder, which render impossible or insufficient the exploitation of the invention, but not any economic or financial difficulties.

Modification of Protection after Granting

Forfeiture: (a) once its duration expires; (b) by failure to pay fees as due. 

Nullification is declared by a court decision, (a) where the subject matter is not susceptible of protection, namely where it does not satisfy the novelty, inventive step or industrial applicability requirements; (b) where granting formalities have not been complied with; (c) where rules of public order have been violated; (d) where the title of the invention covers a different subject matter; (e) where its subject matter has not been described in the appropriate manner. 

Revocation: only by a court decision in a legal action filed by any interested party or by the public prosecutor, (a) where the owner has no right to the patent because it does not belong to him/her; (b) where the patent has been granted with infringement of third party’s rights.

Expropriation: the State can expropriate any patent by paying an indemnity if the State has to meet obligations towards someone or in case of public interest. 

Infringement and penalties: legal action against infringement of patent rights must be brought before the courts, it being possible to include claims for damages. The proceedings against the infringer can be initiated by an injunction. According to the general Portuguese civil law, proof of infringement must be produced by the patentee. However, if the patent right on a process for the manufacture of a new product is infringed, there is a reversal of the burden of proof: it is presumed that the same product manufactured by a third party is patented by the patented process, except if demonstrated otherwise. Criminal penalties are set by the court within the limits fixed in the Industrial Property Code, as well as compensation for damages.

Rights derived from a European Patent

Portugal can be designated in a European Patent Application.

The grant of a European Patent in which Portugal is designated confers the same right as the grant of a Portuguese Patent.

A Portuguese translation must be filed within three months from the publication date of the issue of the European Patent.

The provisional protection according to Articles 67 and 93 EPC will begin only upon filing a Portuguese translation of the claims, together with a copy of the drawings and title upon publication thereof by the Portuguese Institute of Industrial Property. A national patent for an invention for which a European patent valid in Portugal has been granted, with the same date of application or priority to the same inventor or with his consent, shall expire when (a) the time limit for opposing the European patent has expired with no opposition having been filed; or (b) the opposition process has ended and the European patent has been maintained.

If a national patent is granted after any of the dates indicated in (a) and (b) above, this patent shall expire and the corresponding notice shall be published in the Industrial Property Bulletin. The subsequent extinction or annulment of the European patent shall not affect the provisions in the previous paragraphs.

Rights Derived from a PCT Patent

Portugal can be a designated or elected country since November 24, 1992.

International applications by natural or legal persons, with residence or registered office in Portugal, shall be submitted to the Portuguese Institute of Industrial Property, European Patent Office or World Intellectual Property Organization. Whenever no priority of a prior application filed in Portugal is claimed, an international application shall be submitted to the Portuguese Institute of Industrial Property. The Portuguese Institute of Industrial Property shall act as receiving Office under the Cooperation Treaty. Any international application submitted to the Portuguese Institute of Industrial Property, acting as receiving Office, is subject to payment of the fees set forth in the Cooperation Treaty, plus a transmittal fee. International applications submitted to the Portuguese Institute of Industrial Property acting as receiving Office may be written in Portuguese, French, English or German. International applications for which the Portuguese Institute of Industrial Property acts as designated and elected Office shall have the same effect in Portugal as those of a Portuguese patent application filed on the same date. After publication, under the Cooperation Treaty, international applications shall enjoy provisional protection in Portugal equivalent to that conferred to national patent applications published after the date on which a Portuguese translation of the claims, accompanied by a copy of the drawings, even if they contain no expressions, to be translated, is made available at the Portuguese Institute of Industrial Property. The Portuguese Institute of Industrial Property shall publish a notice with the particulars necessary to identify the international application in the Industrial Property Bulletin. As of the date of publication of the notice, anyone may have access to the translation and obtain reproductions thereof.