Portugal’s simpler industrial property code

Portugal’s Decree-Law 143/2008 of July 25th entered into force on 1st October 2008 introducing several amendments to the Industrial Property Code intended to revise the mechanisms of protection and access to industrial property (IP) by individuals and companies. The amendments, which simplify access to the IP system reducing costs inherent to protection and of delays, were applauded by professionals in the area.

For this purpose, several measures were adopted, namely:

I) A reduction in delays by the competent public authorities;

II) The suppression of formalities and simplification of procedures;

III) Promotion of access and comprehension of the IP system by individuals and companies; and

IV) The establishment of services to incentivise innovation.

Among the major highlights of the amendments were the following:

a) General part of the Industrial Property Code: i) in case of judicial actions based on provisory protection, it establishes the suspension of the proceedings after the end of the production of legal briefs;

ii) amendments of the arbitrage proceedings; amendment of the term for the priority declaration, which is now of 1 month counting from the expiry of the priority term for designs or models and trademarks applications and 4 months counting from the expiry priority term for patents and utility models applications; iii) the term for filling the opposition and reply can only be extended once, by means of an application duly grounded and subject to the acceptance of the Industrial Property Office;

b) Trademarks: i) reduction of the term to declare the priority of a previous request from 3 to 1 month; ii) reduction of the term from 2 to 1 month of the response to provisory refusal and for reappreciation.

c) Patents: i) raising of the term to declare the priority of a previous request, from 3 to 4 months; ii) establishment of a new provisory patent request and the respective procedure; iii) reduction of the term for the decision on the patents invention, from 3 to 1 month; iv) introduction of the possibility to convert an European patent into a national patent, in case of revocation or refusal of the European patent; v) introduction as penalty for the cases of double protection, the caducity of the national patent.

d) Utility Models: i) establishment of a system of alternative conditions to consider an activity as inventive; ii) introduction of a new provision establishing the term of 1 year to the successive presentation of a utility model request; iii) reduction of the term for the decision of litigation proceedings from 3 months to 1 month;

e) Designs: i) reduction of the term to present the documents supporting the disclosure, which is now of one month and may be prorogued for one additional month; ii) raising of the maximum limit of products which may be included on the requests for 100 instead of 10; iii) abolition of the possibility to request for an examination, once the novelty and singular character are only examined by the Industrial Property Institute (INPI) in case of opposing; iv) abolition of previous protection system;

f) Name and Insignia of Establishments: i) suppression of the names and insignia of establishment modalities, which were substituted by Logo category.

g) Infringements: i) a reduction of the maximum limit for the penalty regarding the “Violation of Logo Exclusive” for € 3.740 instead of € 7.500; ii) inclusion in the “Illicit Trademarks Use” of the trademarks which reproduce property belonging to third parties.

Despite its scope, some of the amendments were not at all consensual namely the possibility of using only English in certain procedures and abolition of the Declaration of Intention to Use – a critical tool offering an awareness of what trademarks were in use and enabling those interested in registering similar or equal trademarks to do so when a Declaration of Intention to Use had not been presented.

Moreover, the amendments have proved to be somewhat insufficient regarding the efficient combating of counterfeiting – a situation remedied by the transposition of Directive 2004/48/CE on April 1st 2008 (the “Enforcement” Directive).

César Bessa Monteiro is head of the intellectual property practice at ABBC, he can be reached via c.bmonteiro@abbc.pt. Margarida Leitão Nogueira is a junior lawyer at ABBC and can be reached at m.nogueira@abbc.com.