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A European Patent (EP) application may generally be filed at the European Patent Office or the national Patent Office (if the national law so permits). In some countries, however, certain EP applications should be filed initially with the national authorities due to national security concerns. Several States have provided for such first filing requirements (or require that a prior authorization is needed for communicating the invention abroad) basically for keeping secrecy of inventions which are relevant for military purposes.

First filing requirement

The European Patent Convention (EPC) allows in principle that a EP application is filed with the central IP office or the European Patent Office. However due to national security considerations the EPC recognizes that States may prescribe that any application is to be filed initially with a national authority (or require that a prior authorization is needed for communicating the invention abroad). Several States have provided for such first filing requirements with the basic concern of maintaining secrecy of inventions relevant for military purposes.

National security

Article 78(2) of the Portuguese IP Code provides that where the applicant has its corporate office or residence in Portugal the European Patent application must be filed through the national office unless a prior national Portuguese application is claimed in accordance with the Paris Convention.

The rule is justified by the need to protect secrecy of inventions which have a potential military interest. According to a law of 1959 (Decree-Law 42201) the Patent Office has to send all patent applications filed by applicants having its corporate office in Portugal or with residence in Portugal to the Department of the Defense Ministry. Within 5 days the invention should be analyzed to determine whether it is of interest to national defense and should remain secret. However in practice it appears that the secrecy regime was never applied. It is expected that the relevant national provisions in this matter will be amended in a not too distant future.

Legal consequences

The requirement has no immediate consequence at the moment of filing in the European Office. However after grant the EP will be of no legal effect in Portugal. Accordingly, the subsequent EP validation will be refused by the Portuguese Office. It is not clear whether the same consequences should apply when the EP has unitary effect. So far Portugal did not adopt national provisions for implementation of the unitary patent.

In a decision of the Lisbon Court of Commerce on 13-09-2013 the first filing rule was interpreted in stricter way. The case concerned a European Patent jointly owned by a Portuguese company, a US company and the Italian inventor. The EP validation had been rejected by the Portuguese Office given that the EP was owned by a Portuguese company but it was not based on a prior national patent filed in Portugal (but in Ireland). On appeal, the court reversed the Office decision considering that Article 76 should not apply to joint ownership of patents. The court found that the Office interpretation would unjustly harm the other non-Portuguese joint owners.

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