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.