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European Patents – National Validation

Effects of a European Patent in general

In each of the contracting states for which it is granted, a European patent has the effect of and is subject to the same conditions as a national patent granted by that state, unless otherwise provided in the EPC (Article 2(2) EPC).

Requirements after grant 

The procedural steps laid down by the national Portuguese law for validation of European patents are the following:

  1. The proprietor must supply a Portuguese translation of the patent as granted to the Industrial Property Office.

  2. The normal deadline for filing the translation is 3 months after the date of the mention of the grant is published in the European Patent Bulletin (B1 document). The belated filing of the translation is possible for 1 additional month subject to a surcharge.

  3. The proprietor must submit a form and pay the validation fee when filing the translation.

  4. The proprietor should indicate if the invention protected by the EP corresponds to an earlier national patent application in order to avoid double patenting via a European patent.

  5. The Office shall publish a notice in the national Industrial Property Bulletin which identifies the EP. As from the publication date anyone may have access to the translated text and obtain copies thereof. The filing of the translation shall be advertised through publication in the national Industrial Property Bulletin.

If the European patent is not validated in Portugal, then it has no effect in Portugal and it cannot be enforced through the Portuguese courts. 

Requirements of translation 

  1. The law requires the submission of a translation in Portuguese of the entire patent specification including claims, description, abstract and title and any text on drawings.

  2. The translation must be accompanied by a copy of the drawings, even where there is no textual matter. 

  3. The translation must be submitted under the supervision of an Industrial Patent Agent acknowledged by the IP Office.

Note: Portugal is not a signatory of the London Agreement for reduced translation requirements. However Portugal is a participant in the enhanced cooperation on unitary patent protection and has signed the Agreement on a Unified Patent Court.

Effect of translation

  1. The Portuguese translation shall be the authentic text of the EP in Portugal under the circumstances mentioned in article 70(3) EPC: if the protection conferred in the language of translation is narrower than in the language of the proceedings the Portuguese text will be deemed authentic in Portugal.

  2. The applicant of proprietor may file, at any time, a corrected translation of the European patent application or European patent. In such a case, any user in good faith will be protected in accordance with article 70(4)(b) EPC.

Requirements after amendment

It is necessary to validate the new text of the EP. In order to maintain the EP as amended by a decision of the EPO in opposition procedures or in consequence of a limitation requested by the proprietor, the same steps apply for the text in amended form (B2 or B3 document), (please see “Requirements after grant”). 

Requirements for provisional protection

  1. European patent applications that have been published in accordance with the EP Convention will benefit from provisional protection in Portugal provided that a translation of the claims into Portuguese and a copy of the drawings, if any, are available to the public at the Industrial Property Office. 

  2. The Office shall publish a notice in the national Industrial Property Bulletin which identifies the EP application. As from the publication date anyone may have access to the translated text and obtain copies thereof.

  3. Under provisional protection, the applicant has the right merely to claim compensation for damages which arises from the date of publication of the notice in the IP Bulletin. The EP applicant may initiate legal proceedings based on this provisional protection, however the court can only issue a decision on the merits of an action after the EPO has finalised a decision that grants or refuses an EP. 

Annual renewal fees

  1. There is only an obligation to pay renewal fees directly to the EPO for the year in which the notice of the grant of the EP is published in the European Patent Bulletin. For the years which follow renewal fees are due in Portugal.

  2. The fees shall be due in respect of each subsequent year, calculated from the date of filing of the application. Payment may not be validly made more than 6 months before due date.

  3. The renewal periods expiring on a day on which the IP Office (INPI) is not open for receipt of documents (e.g. Saturday, Sunday and national or local holidays) shall be deemed to extend to the first working day thereafter.

  4. If a renewal fee is not paid in due time, it may still be paid within 6 months after the due date with a surcharge.

  5. It is possible to revalidate lapsed patents within one year of the publication of the notice of the lapse. A surcharge, equal to three times the fee, will be due and the revalidation will be without prejudice to third party rights.

For any further information please contact us.

 

National Law for IP matters

Decree-Law 36/2003 of 5 March 2003 (Industrial Property Code)
Decree Law 63/85, of 14 March 1985 (Author's Rights and Related Rights Code)

International Law

  • The Bern Convention for the protection of literary and artistic works
  • The Universal Copyright Convention
  • The Paris Convention (including the ratification of Stockholm revision)
  • The TRIPS Agreement
  • The European Patent Convention
  • The Patent Cooperation Treaty
  • The Strasbourg Agreement relating to international patent classification
  • The Budapest Treaty (International Recognition of the Deposit of Micro-organisms for the Purpose of Patent Procedure)
  • WTO and The Madrid Agreement, concerning International Trade Mark Registrations, and the Protocol relating to the Madrid Agreement
  • The Nice Agreement, relating to the international classification of trade and service marks
  • The Lisbon Agreement (international registration and protection of appellations of origin)
  • The Madrid Agreement concerning false indications of origin
  • The International Convention for the Protection of New Varieties of Plants (UPOV)
  • The International Convention on Copyright For The Protection Of Performers, Producers Of Phonograms And Broadcasting Organisations (Rome, 1961)

Portuguese Patents

Filing requirements
(1) Name, nationality and address or place of business of the applicant(s).
(2) Title, description and claims of the invention and abstract (preferably not exceeding 150 words).
(3) Drawings, if necessary to explain the description.
(4) Name and country of residence of the inventor(s).
(5) Indication of number and date of filing of Portuguese Utility Model filed for the same invention, in case of simultaneous or succeeding filings.
(6) Priority data, if applicable.
(7) Power of Attorney (not required for filing through an Official Industrial Property Agent).

Opposition
The term for filing an opposition is 2 months counted from publication of the patent abstract and classification in the Industrial Property Bulletin. Objections shall be notified to the applicant who may respond within 2 months counted from notification of the opposition.

Duration
The patent duration begins on the date of application and runs for a period of 20 years, subject to the payment of annuities. This period is extendable through supplementary protection certificates for certain patents in the field of medicinal products and phytopharmaceutical products.

European Patents – National Validation

Effects of a European Patent in general

In each of the contracting states for which it is granted, a European patent has the effect of and is subject to the same conditions as a national patent granted by that state, unless otherwise provided in the EPC (Article 2(2) EPC).

Requirements after grant 

The procedural steps laid down by the national Portuguese law for validation of European patents are the following:

  1. The proprietor must supply a Portuguese translation of the patent as granted to the Industrial Property Office.

  2. The normal deadline for filing the translation is 3 months after the date of the mention of the grant is published in the European Patent Bulletin (B1 document). The belated filing of the translation is possible for 1 additional month subject to a surcharge.

  3. The proprietor must submit a form and pay the validation fee when filing the translation.

  4. The proprietor should indicate if the invention protected by the EP corresponds to an earlier national patent application in order to avoid double patenting via a European patent.

  5. The Office shall publish a notice in the national Industrial Property Bulletin which identifies the EP. As from the publication date anyone may have access to the translated text and obtain copies thereof. The filing of the translation shall be advertised through publication in the national Industrial Property Bulletin.

If the European patent is not validated in Portugal, then it has no effect in Portugal and it cannot be enforced through the Portuguese courts. 

Requirements of translation 

  1. The law requires the submission of a translation in Portuguese of the entire patent specification including claims, description, abstract and title and any text on drawings.

  2. The translation must be accompanied by a copy of the drawings, even where there is no textual matter. 

  3. The translation must be submitted under the supervision of an Industrial Patent Agent acknowledged by the IP Office.

Note: Portugal is not a signatory of the London Agreement for reduced translation requirements. However Portugal is a participant in the enhanced cooperation on unitary patent protection and has signed the Agreement on a Unified Patent Court.

Effect of translation

  1. The Portuguese translation shall be the authentic text of the EP in Portugal under the circumstances mentioned in article 70(3) EPC: if the protection conferred in the language of translation is narrower than in the language of the proceedings the Portuguese text will be deemed authentic in Portugal.

  2. The applicant of proprietor may file, at any time, a corrected translation of the European patent application or European patent. In such a case, any user in good faith will be protected in accordance with article 70(4)(b) EPC.

Requirements after amendment

It is necessary to validate the new text of the EP. In order to maintain the EP as amended by a decision of the EPO in opposition procedures or in consequence of a limitation requested by the proprietor, the same steps apply for the text in amended form (B2 or B3 document), (please see “Requirements after grant”). 

Requirements for provisional protection

  1. European patent applications that have been published in accordance with the EP Convention will benefit from provisional protection in Portugal provided that a translation of the claims into Portuguese and a copy of the drawings, if any, are available to the public at the Industrial Property Office. 

  2. The Office shall publish a notice in the national Industrial Property Bulletin which identifies the EP application. As from the publication date anyone may have access to the translated text and obtain copies thereof.

  3. Under provisional protection, the applicant has the right merely to claim compensation for damages which arises from the date of publication of the notice in the IP Bulletin. The EP applicant may initiate legal proceedings based on this provisional protection, however the court can only issue a decision on the merits of an action after the EPO has finalised a decision that grants or refuses an EP. 

Annual renewal fees

  1. There is only an obligation to pay renewal fees directly to the EPO for the year in which the notice of the grant of the EP is published in the European Patent Bulletin. For the years which follow renewal fees are due in Portugal.

  2. The fees shall be due in respect of each subsequent year, calculated from the date of filing of the application. Payment may not be validly made more than 6 months before due date.

  3. The renewal periods expiring on a day on which the IP Office (INPI) is not open for receipt of documents (e.g. Saturday, Sunday and national or local holidays) shall be deemed to extend to the first working day thereafter.

  4. If a renewal fee is not paid in due time, it may still be paid within 6 months after the due date with a surcharge.

  5. It is possible to revalidate lapsed patents within one year of the publication of the notice of the lapse. A surcharge, equal to three times the fee, will be due and the revalidation will be without prejudice to third party rights.

For any further information please contact us.

 

PCT Patents

Competent designated (or elected) Office if Portugal is designated (or elected)

- National protection: National Institute of Industrial Property
- European patent: European Patent Office

In the instance of a designation or election of Portugal in an international patent application, the application is considered as an application for a European patent designating Portugal.

Entering the National Phase
The requirements for entry into the national phase (under Chapters I and II) should be fulfilled before the end of the 30th month from the priority date.

Utility Models

Filing Requirements
(1) Name, nationality and address or place of business of the applicant(s).
(2) Title, description and claims of the invention and abstract (preferably not exceeding 150 words).
(3) Drawings, if necessary to explain the description.
(4) Name and country of residence of the inventor.
(5) Indication of number and date of Patent application filed for the same invention, in case of simultaneous or succeeding filings.
(6) Priority data, if applicable.
(7) Power of Attorney (not required for filing through an Official Industrial Property Agent).

Oppositions
Same as for patents. The publication takes place within 6 months after the application, except when anticipation or deferment is requested.

Duration
The utility model protection runs for 6 years counted from the date of application. This term of protection can be renewed twice for additional periods of 2 years.

Designs

Filing Requirements
(1) Name, nationality and address or place of business of the applicant(s).
(2) Name and country of residence of the design creator.
(3) Indication of the products to which the design applies or relates.
(4) Graphical representations or photographs of the design. (*)
(5) Authorization signed by the design creator in case the applicant is not the same person.
(6) Priority data, if applicable.
(7) Power of Attorney (not required for filing through an Official Industrial Property Agent).

(*) Multiple design applications are possible provided that all the designs belong to the same Locarno class (up to 100 designs in the same application).

Oppositions
The publication takes place shortly after the application except if deferment is requested. The term for filing an opposition is 2 months counted from publication of the design application. Oppositions shall be notified to the applicant who may respond within 2 months.

Duration
The design registration is valid for 5 years from the date of filing of the application. This term may be renewed up to a maximum validity period of 25 years.

Trade and Service Marks

Filing Requirements
(1) Name, nationality and address or place of business of the applicant(s).
(2) Specification of goods and/or services (Nice Classification; multi-class application is possible)
(3) Graphical representation of the mark.
(4) Priority data, if applicable.
(5) Power of Attorney (not required for filing through an Official Industrial Property Agent).

Oppositions
Within 2 months after publication in the Official Bulletin. The applicant will be notified and given 2 months to reply.

Duration and Use
The duration of a trade or service mark registration is 10 renewable years counted from the date of grant. The lack of genuine use for 5 consecutive years without due cause is a ground for revocation.