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:
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The proprietor must supply a Portuguese translation of the patent as granted to the Industrial Property Office.
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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.
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The proprietor must submit a form and pay the validation fee when filing the translation.
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The Office shall publish a notice in the national Industrial Property Bulletin which identifies the EP.
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As from the publication date anyone may have access to the translated text and obtain copies thereof.
Where the European patent is not validated in Portugal, it cannot have any effect in Portugal, namely it cannot be enforced through the Portuguese courts.
Requirements of translation
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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.
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The translation must be accompanied by a copy of the drawings, even where there is no textual matter.
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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. Portugal is a participant in the enhanced cooperation on unitary patent protection and has signed the Agreement on a Unified Patent Court (not in force yet).
Effect of translation
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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.
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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
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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.
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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.
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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
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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.
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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.
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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.
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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.
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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.
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