The Portuguese Government has enacted the Decree Law 110/2018 published on 10 December 2018 which revokes and amends the Industrial Property Code implementing the Trademark Directive and the Trade Secrets Directive.

The new law brings important changes for all types of industrial property rights not only at the registry and administrative level but also in respect of the enforcement procedures.

The Law 62/2011, which addresses certain industrial property disputes between holders of patents related to medicinal products and companies that produce or distribute generic medicines, is amended by establishing that the option of arbitration becomes voluntary. 

The new regime will apply as from 1 July 2019 with the exception of rules concerning trade secrets which begin to apply on 1 January 2019 and the amendments to Law 62/2011 which will come to effect on 9 January 2019. 

A quick review of the most significant changes are as appended below.

• Patents

Amendments to the patent specifications limited: amendments to applications in the examination stage cannot add subject-matter which extends beyond the content of the application as filed.

Future disputes under Law 62/2011 (originators/generic medicines) may be filed at the Intellectual Property court. 

• Supplementary Protection Certificates

The Patent Office will be able to declare ex officio that an SPC is invalid where the basic patent was annulled or if the basic patent has lapsed before the period of duration has passed.

• Designs

New administrative procedure for invalidation: until now the invalidation of registered designs was a matter under the competence of the Intellectual Property court only.

• Trademarks

Request for evidence of use in opposition proceedings: the applicant will be allowed to invoke non-use of the opponent’s mark as a defense.

New administrative procedure for declaration of invalidation: until now the competence for invalidation belonged exclusively to the Intellectual Property court.

• Enforcement

Creation of new type of crimes for trademark infringement: for example, the importation/exportation of goods with counterfeited trademarks and the use of a trademark reproduction or imitation as company name.

Creation of criminal sanctions for use of registered logotypes: until now infringement of logotypes involved no criminal liability.

Civil enforcement measures are extended to trade secrets

New provision for costs of storing and destroying seized items: those will be deemed proceedings costs, and the responsibility for their payment is determined in accordance with the terms of the criminal procedural law.