On the 10th of December 2018, the Decreto-Lei nº 110/2018 was published in the Portuguese Diário da República, introducing the new Industrial Property Code (Código da Propriedade Industrial-CPI). With this decree, the Directives (EU) 2015/2436 (relating to trademark legislation harmonisation between member states) and (EU) 2016/943 (concerning “know-how” and trade secrets protection), are incorporated into national law. This new piece of legislation introduces several relevant changes to intellectual property rights and their enforcement.
Trademark regulation suffered several amendments, notably the Portuguese Institute of Industrial Property (INPI) now has the power, in a first instance, to declare invalid registered trademarks, an administrative procedure that used to fall within the scope of the Court of Industrial Property competences.
Additionally, in cases of trademark disputes elicited after publication of the trademark application, by an opposition filed by a third party on the grounds of a previous registered trademark, the applicant can request the plaintiff to provide evidence of serious use of the trademark on which the opposition is based. This also applies, in preliminary refusals for trademark registration issued by the INPI. Another relevant change is that trademark duration is now calculated from the date of filing rather than from the date of grant.
As far as Designs are concerned the Portuguese Institute of Industrial Property (INPI) now also has the power, in a first instance, to declare registered designs invalid, an administrative procedure that also used to fall within the scope of the Court of Industrial Property competences.
Concerning Patent Law, in an amendment to Law 62/2011, it has been established that arbitration in disputes between medicinal products patent proprietors and generics manufacturers is now voluntary, rather than compulsory as it was previously. Another important change is that the new law will feature specific wording excluding from patentability plant and animal products directly obtained by essentially biological processes (Art. 52.3b).
The law now allows for “double protection” whereby a European Patent validated in Portugal can now co-exist with a national patent or utility model for the same invention and in the name of the same owner.
In terms of patent enforcement the Law provides for new rights against indirect patent infringement, which were until now not available in Portugal.
The scope of subject matter protectable through Utility Models has also been changed to exclude food products and processes for their preparation. Additionally, examination of Utility Models has now been made compulsory.
As far as Supplementary Protection Certificates are concerned, the new law allows the Patent Office to declare ex officio their invalidity when the patent on which they are based has been declared invalid.
The new CPI will come into force on the 1 July of 2019, although the provisions regarding trade secrets protection, and to the amendment of Law 62/2011, have been in force since the 1 and the 9 of January 2019, respectively.
