The recently published Portuguese Industrial Property Code (CPI), will enter into force this July 1st, 2019 – with exception of the articles related to Trade Secret Protection, which have entered into force on January 1st, 2019.
This new CPI, approved by means of Legal Decree No. 110/2018, transposes the European Parliament and Council´s Directives; 2015/2436 to approximate the laws of the Member States relating to trade marks and 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. The CPI has seized the opportunity to simplify and clarify the administrative proceedings for granting, maintenance and surveillance of Industrial Property Rights, and introduces new mechanisms in order to strengthen the system and increase efficiency in the infringement action congestion.
Amongst the most relevant changes this Code (CPI) has implemented, we highlight the following:
- The INPI will be competent to declare nullity or cancellation of registrations of designs, trademarks, logos, denominations of origin, geographical indications and rewards, unless this claim is presented as a counteraction;
- The Intellectual Property Court will be competent to declare nullity or cancellation of patents, supplementary protection certificates, utility models and topographies of semiconductor products;
- The judicial actions of cancellation and applications for cancellation filed before the INPI must be filed within 5 years from the granting of the relevant IP right.
- The Arbitration System for referenced pharmaceutical products and generic pharmaceutical products will now be voluntary.
- Deadlines to file response to office actions in formal examination phase are extended;
- Patent applications cannot be modified to the extent it exceeds the technical matter it contained at the filing date;
- Patent Applications shall be rejected when the object of the invention is not described in a clear and detailed manner;
- The prohibition of double protection though EU Patent and National Patents is eliminated.
Supplementary protection certificates (SPC):
- INPI may correct the validity period of a SPC:
- Upon substantiated request, if the date of authorization for the product´s introduction in the EEE was incorrect in the application.
- If the INPI verifies an error in the calculation of the validity period.
- The SCP can be deemed null by the INPI when the base patent has lapsed or has been annulled.
- The following inventions cannot be protected by means of an utility model:
- Chemical substances or compositions per se; or related to chemical procedures.
- Pharmaceutical substances or compositions, or pharmaceutical procedures.
- Food products or procedures for preparation of food products.
- The term to file response to office actions in formal examination phase is extended.
- There is no longer the possibility to apply for utility models without examination.
- The utility model application shall be rejected if the object of the invention is not described in a clear and detailed manner.
- After the publication of the application, it can only be modified, upon request of the applicant and only to (i) limit products, (ii) correct the name or address of the applicant, (iii) obvious typos; and only if said change does not affect the design or increases its scope.
- The registration may be renewed in whole or in part.
- The “graphic representation” requirement is replaced with a representation suitable to determine, precisely and clearly, the object of protection.
- The Certification and Collective TM System ´s scope is extended and clarified.
- A registration or application can be divided, and divisionals would maintain the application date of the priority date.
- Third Parties can file objections to the registration of a TM based on absolute grounds of refusal (within the following 2 months of the publication)
- Within an opposition proceeding, the applicant can request the opposer to file evidence of use of its TM (if said TM has been registered for more than 5 years).
- After the publication of the application, it can only be modified, upon request and only to (i) limit products or services, (ii) correct the name or address, (iii) obvious typos; and only if said change does not affect the TMs scope substantially.
- The applicant would have the possibility to allege non-use of the prior TM used as grounds for a provisional refusal, if said TM has been registered for more than 5 years.
- New Absolute Grounds for refusal (highlighting: bad faith, upon claim).
- The TM Registration will last 10 years, from the date of the TM application. TM Registrations granted before the CPI, will last 10 years from the granting date (only the first term); the consequent renewals would be granted from the application date.
- TM owner rights are exhaustively regulated.
- Licensed faculties for alleging TM right violations are clarified.
- The civil injunctive relief measures related to IP are extended to infringement of trade secrets.
- New criminal figures are created for counterfeit, illegally imitating or illegally using TM.
- It will be mandatory to inform the right`s owner of the unofficial seizure of infringing goods by criminal police.
- A new mechanism is created to allow the destruction of the seized goods, even before the final judgement declaring the existence of the infringement.