The new Portuguese Industrial Property Code, approved by Decree-Law 143/2008 of July 24, came into force on October 1 2008.

This new Code makes several significant changes to the Portuguese IP Law. Its general aim is to simplify and speed up the procedures before the Trade Mark Office.

DIUs no longer required for trade marks

One of the most relevant and practical changes is that the filing of periodical declarations of intent to use (DIU) is no longer required in order to keep a Portuguese or international trade mark registration in force. This specific change became effective immediately after publication on July 26 2008.

According to this new Law, the trade marks in relation to which DIUs were not filed in the past will not be subject to cancellation on this ground anymore. In any case, trade marks will still be subject to cancellation if they are not used during a consecutive period of five years.

The filing of belated oppositions will no longer be admissible regardless of the reason why the opposition was not timely filed. However, it becomes possible to ask for the suspension of the proceedings for a longer period of time. This is particularly relevant when the parties enter into negotiations over amicable settlements.

On a more practical note, certificates of registration still remain the appropriate way to prove ownership of IP rights. However, the issuance of these certificates is not mandatory since it depends on a request from the interested party. Therefore, it is no longer mandatory to pay the fees regarding the issuance of the certificate of registration simultaneously with the payment of the granting fees.

In order to speed up the trade mark registration procedure, several procedural deadlines have been reduced, including those concerning extensions of time to file oppositions and counterstatements or replies to provisional refusal decisions issued by the Patent and Trade Mark Office.

Several deadlines have also been shortened: for example, the non-extendable deadline for the trade mark owner to reply to a cancellation action is reduced to one month.

In contrast to these changes, if until now a single official fee was foreseen for trade mark renewals (independently of the number of classes for which trade marks were registered) from now on a basic fee is established for a trade mark renewal in one class and for each additional class an additional official fee will be charged.

Provisional patent introduced

As to patents, to try to persuade inventors into protecting their inventions – as an alternative to the publication of their scientific studies – similar to the US experience, the new Law makes it possible to file a provisional patent application (PPP), establishing a 12-month term to transform it into a final (non-provisional) patent application, by filing the required documentation.

If these documents are not filed, the priority of the patent will be null. This provisional application requires a document describing the object of the invention, so that any person skilled in the art may carry out the invention.

Only after the transformation of the provisional patent application into a final patent application will take place an examination regarding the form and limitations (former formal examination).

In any case, a (non-binding) preliminary search report will be issued within 12 months from the request of the applicant.

On a different note one should also point out that, although the supporting documents may be filed in English, the applicant will still be notified to provide the Portuguese translation.

Concerning the validation of European patents, information about the existence of equivalent prior rights is now required and the filing of a translation is now also foreseen for cases of limitation of European patents before the EPO.

There are two other important changes concerning patents that are definitely worth mentioning. For the first time, the patent owner may limit the scope of the patent before the courts. On the other hand, the payment of the third and fourth annuities of national or European patents and utility models is no longer required. Nevertheless, the owner is compelled to formalize the acts free of charge as proof of the continued interest in the relevant right.

Finally, non-opposable disclosures have been limited to official or officially recognized exhibitions (according to the Convention Regarding International Exhibitions) that occurred up to six months before the application date.

As to supplementary protection certificates, a reference is made to the filing of a request to extend the validity of a SPC for paediatric use. This request may be filed simultaneously with an SPC application, while this is pending or up to two years before the expiry date for an already granted SPC.

Within the five-year period after the enforcement of EC Regulation 1901/2006 of December 12, the requests for the extension of a granted SPC may be filed up to six months before the expiry of the SPC.

The extension request must include a copy of the certification of the compliance with a complete and approved paediatric investigation plan and, if there is any doubt regarding the proceedings foreseen in Decree-Law 176-2006 of August 30 (the Portuguese Marketing Authorization Law), there must be a proof of the marketing authorizations in all EU member states.

Utility models and designs

Some changes have also been established for utility models, one of the most relevant being that there must be a clarification of the requirements for inventive step. If the utility model application has a practical or technical advantage for the manufacture or use of the product or process, then it fulfils the inventive step requirement.

The formal examination and the limitations regarding the object of the utility model are now carried out one month after the application.

Whenever the examination of the invention is requested, a non-binding search on the state of the art is made (preliminary examination report).

The application should now be published within six months from the application date. This publication may still be postponed, upon request of the applicant, up to 18 months after the application date.

The rules on designs or models also changed slightly. It is no longer mandatory to file a description of each product. This description may still be filed, if the applicant wishes to do so or upon request of the PTO, and is limited to 50 words.

It is now mandatory to give the title using terms from the Locarno classification and mentioning the class of the classification where the application is inserted.

Another change concerns the fact that the publication of the application is made after the formal request or regularization. The ex officio examination of the novelty of design or model applications no longer exists.

The number of multiple applications is now extended from 10 to 100 products provided that they belong to the same Locarno class.

Until March 30 2009, the applicants of a pending design or model may request examination. After that date no examination having been made, the applications will be converted into final registrations.

Due to the high number of distinctive signs foreseen in the previous Law, which in many cases lead companies into error about how to properly protect their IP rights, business names and business signs are no longer registrable. At request of their owners, existing business names and business signs will be subject to the rules established for logotypes. Pending applications of business names and emblems are now called logotype applications.

All the lapsed business names and emblems under revalidation will be converted into logotype registrations at the moment of the acceptance of the revalidation. Business names and emblem registrations ready for the payment of the registration fee will be converted into logotype registrations at the moment of the respective payment.

Finally, in order to make sure that the Trade Mark Office database provides accurate and updated information regarding the status of IP rights, whenever an appeal from a Trade Mark Office decision is lodged, communications between the Trade Mark Office and the Lisbon Court of Commerce should from now on be made electronically.

Paulo Monteverde and João Jorge

Raul César Ferreira (Herd) Lda
Rua do Patrocínio, 94
1399-019 Lisbon
Portugal
Tel: +351 213907373
Fax: +351 213978754
mail@raulcesarferreira.pt
www.raulcesarferreira.pt