Portugal: Patents Comparative Guide

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The main sources of patent law in Portugal are:

• laws (Portuguese and EU);
• international treaties; and
• case law.

The most recent major revision of the Industrial Property Code was approved by Decree-Law 110/2018, which entered into force on 1 July 2019. This new law incorporated EU Directive 2016/943 on the protection of know-how and trade secrets into Portuguese law.

The Industrial Property Code sets out, among other things:

• the requirements for obtaining a patent;
• the resulting rights accorded; and
• the remedies for patent infringement.

Portugal is a member of:

• the Paris Convention (since 1883);
• the World Intellectual Property Organization (since 1967);
• the European Union (since 1986); and
• the World Trade Organization (since 1995).

The following treaties are also applicable:

• the Strasbourg Agreement;
• the European Patent Convention;
• the Patent Cooperation Treaty;
• the International Union for the Protection of New Varieties of Plants Convention; and
• the Budapest Treaty.

However, the Patent Law Treaty and the London Agreement are not applicable in Portugal.

In March 2012, Portugal established a specialised IP Court. In addition, Portugal has signed the Agreement on a Unified Patent Court.

1.2 Who can register a patent?

Anyone – whether a natural person or a legal entity (eg, a company, institute, university or association) – may apply for a patent in Portugal, alone or jointly with another, without any restrictions in terms of nationality or residence.

2 Rights

2.1 What rights are obtained when a patent is registered?

Once registered, a patent accords the owner the exclusive right to prevent unauthorised third parties from manufacturing, offering for sale, selling, storing, bringing to market, importing or using the patented product or process. The same applies for products directly obtained from the patented process. The patent regime also provides that any third party may request a compulsory licence if the patent owner does not exploit the patent within four years of the date of filing or within three years of grant, whichever is later.

Published European patents accord the same rights to the patent owner in Portugal, but only after the translated claims and drawings have been made accessible to the general public by the National Industrial Property Institute.

2.2 How can a patent owner enforce its rights?

In Portugal, both administrative and judicial actions are available to patent owners, although most patent infringement cases are dealt with through civil suits.

Civil and criminal court proceedings can be initiated by a patent owner or licensee before a state court. The IP Court has exclusive competence to rule on validity issues regarding IP rights.

Customs intervention can also be claimed in order to block imports of infringing goods.

Arbitration may be an option (except for criminal offences), especially if a priori defined by agreement between the parties.

2.3 For how long are patents enforceable?

A patent is granted for 20 years from the date of filing, provided that all annual fees are duly paid. For pharmaceutical and phytopharmaceutical patents, this period can be extended through a supplementary protection certificate (SPC). If granted, the SPC extends the patent right by another five years. If an SPC is sought for patents relating to a medicament for paediatric purposes, an additional six months on top of the five years may be granted.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The National Industrial Property Institute (INPI) governs the grant procedure in Portugal. INPI conducts both formal and substantive examinations of patents.

3.2 What is the cost of registration?

The official filing fees are set out in the following table. As the official fees are relatively low, most patenting costs relate to professional support and specialised advice.

3.3 What are the grounds to reject a patent application?

Article 23 of the Industrial Property Code provides that a patent application may be refused on the following grounds:

• failure to pay the legal fees when due;
• the absence of essential elements of the patent application specification;
• failure to observe any required formalities; or
• the legal impossibility or non-intelligibility of the claimed invention.

Article 75 further provides that a patent application may be refused if:

• it is not novel or there is a lack of inventive step and/or industrial application;
• the subject matter of the claimed invention falls within the scope of the exclusions to patentability;
• there are discrepancies between the title and the claims, or between the description and the drawings;
• the description provided is insufficient to enable performance of the invention by a person skilled in the art;
• the invention is qualified as a design, according to its description and claims;
• the applicable rules on the right to the patent and its ownership are infringed (alternatively, in this specific case, the patent application can be transferred to the appropriate owner on request); or
• it is proved that the applicant is seeking to use the patent application for the purposes of unfair competition and/or that unfair competition is likely to arise if the patent is granted, regardless of the applicant's intention.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

Portugal has entered into various patent prosecution highway (PPH) arrangements, including the Global PPH Pilot programme. These programmes aim to accelerate the examination process for national and Patent Cooperation Treaty applications. Portugal has also entered into a bilateral PPH agreement with China.

Additionally, Portugal allows publication to be brought forward at the applicant's explicit express request, subject to payment of a fee.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

No. For example, pharmaceutical composition claims, first-medical use claims and second medical use claims can be granted.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

In Portugal, the 20-year term for patents can be extended by supplementary protection certificates (SPCs) for medicinal and phytopharmaceutical products. A further extension of SPCs is available for medicinal paediatric products. Standard EU regulations apply.

3.7 What subject matter is patent eligible?

In Portugal, inventions that are new, inventive and susceptible to industrial application are patentable, with the exception of patents that concern the following types of subject matter:

• discoveries, scientific theories and mathematical methods;
• materials or substances that already exist in nature, and nuclear materials;
• aesthetic creations;
• schemes, rules or methods for intellectual acts, playing a game or doing business, and computer programs as such, with no other technical contributions (however, computer programs may be protected under copyright law);
• presentations of information;
• processes for cloning human beings;
• processes for modifying the germinal genetic identity of human beings;
• the use of human embryos for industrial or commercial purposes;
• inventions for the genetic modification of animals which may cause them suffering without any substantial medical benefit;
• the human body (exceptions apply to isolated genetic elements with specific application);
• plant and animal varieties and essentially biological processes for obtaining plants or animals;
• surgical or therapeutic methods for treating human or animal bodies; and
• diagnostic methods used on human or animal bodies.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

If INPI rejects the patent application, the applicant has the right to request a review by INPI and the right to appeal to the IP Court within two months of the date of publication of the refusal decision in the National IP Bulletin.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The validity of a recently issued patent can be challenged before the National Industrial Property Institute (INPI) through a review request for modification of the decision. The request must be submitted to INPI within two months of the date of publication of the patent grant. Subsequently, the modified decision may be appealed to the IP Court or to the specialised arbitration centre – ARBITRARE.

However, after this two-month period, a declaration of nullity or annulment of patents falls solely within the competence of the IP Court.

4.2 How can the validity of an issued patent be challenged?

The validity of a recently issued patent can be challenged by submitting a request, either online or in hard copy, for modification of an issued patent to INPI within two months of the date of publication of the patent grant.

After this two-month period, the validity of an issued patent can only be challenged before the IP Court.

4.3 What are the grounds to invalidate an issued patent?

The grounds for total or partial invalidation are as follows:

• The invention was ineligible for protection;
• The patent was granted without observing all mandatory formalities;
• The public order rules in force were violated;
• The right to the patent does not belong to the patent owner;
• There is a lack of novelty, inventive step or industrial application;
• The invention is not eligible for protection;
• There are discrepancies between the title and the remaining patent specifications; or
• The description of the invention is insufficient to allow its performance by a person skilled in the art.

4.4 What is the evidentiary standard to invalidate an issued patent?

Patent documents, papers, journals, articles in scientific or technical papers and internet publications may all be used as evidence to invalidate an issued patent. The factual and legal arguments invoked must be duly substantiated by the parties, with an indication of the legal provisions applicable to the case. Evidence brought to the court is accepted according to established criteria, on a case-by-case basis, following all procedural rules in force.

In general, the law does not regulate specific assumptions for standards of indicia and evidence. The collected evidence must be assessed and valued by the court as a whole in a critical manner, and within the concrete context in which it arose. Evidence from within the sphere of control of the opponent, as expected, must meet a higher evidentiary bar.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

Third parties that wish to challenge the validity of a patent may:

• bring an action before the IP Court;
• request modification of the decision by INPI through a post-grant review;
• appeal INPI's decision before the IP Court or at the arbitration centre specialising in industrial property – ARBITRARE – through a post-grant review; or
• request a declaration of nullity or annulment of the patent from the IP Court.

4.6 Who can oppose a granted patent?

The Public Prosecutor's Office and any interested party are entitled to bring an invalidity action against a granted patent.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

The Industrial Property Code specifies an opposition procedure before grant. The deadline for filing an opposition is two months from the date of publication of the application in the National IP Bulletin. The deadline may be extended once, for a period of one month; the request for an extension must be filed before the expiry of the original deadline.

For a post-grant review, an issued patent can be validly challenged through a decision modification request at INPI. (If, within two months of publication of a patent grant order, it is recognised that it must be modified, this process can be submitted to INPI). The same deadline applies for filing an appeal against INPI's decision with the IP Court or with the arbitration centre specialising in industrial property – ARBITRARE.

As long as the patent is valid, any interested party can at any time apply for its invalidation. An application for invalidation due to lack of ownership rights must be brought within five years of the patent grant date.

4.8 What are the grounds to file an opposition?

The grounds for opposition are set out in the Industrial Property Code as follows:

• The subject matter of the invention is ineligible for protection;
• The patent was granted without observing all mandatory formalities;
• The public order has been violated;
• The patent does not belong to the patent owner;
• The ownership rules have been contravened;
• There is a lack of novelty, inventive step or industrial application;
• The invention is not eligible for protection;
• There are discrepancies between the title and the remaining patent specifications; or
• The description of the invention is insufficient to allow its performance by a person skilled in the art.

4.9 What are the possible outcomes when an opposition is filed?

The following are possible outcomes when an opposition is filed:

• opposition deemed inadmissible;
• partial or total revocation of the patent;
• amendment or limitation of the patent scope; or
• maintenance of the patent as granted.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

Portuguese law provides that the burden of proof lies with the party that makes an allegation; in particular, the burden of proof lies with the party which alleges that the patent is invalid.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

A post-grant review decision of the IP Court can be appealed to the Appeal Court. The grounds for appeal can relate to the facts implied in the decision and/or to the application of the law to the case.

5 Patent enforceability

5.1 What makes a patent unenforceable?

The Industrial Property Code provides that the following acts performed by a third party without the patent owner's prior consent do not amount to patent infringement:

• non-commercial or private uses; and
• non-commercial research and development purposes.

Also, the Industrial Property Code provides for the exhaustion of patent rights.

A patent is not enforceable against a third party which, through its own means, in good faith and without infringing any non-disclosure obligation, created the same claimed invention or

was using the invention and/or taking serious action in order to begin use of the invention prior to the patent initial filing date. In this case, the burden of proving this prior knowledge lies with the interested third party.

5.2 What are the inequitable conduct standards?

There are no specific provisions on inequitable conduct. A patent obtained in bad faith or due to abuse or misappropriation of a right may be punishable under criminal penalties. The grounds for total or partial invalidation also include the following:

• The patent was granted without observing all mandatory formalities;
• The public order rules in force have been violated; or
• The right to the patent does not belong to the patent owner.

5.3 What duty of candour is required of the patent office?

As part of the Portuguese public administration, the National Industrial Property Institute (INPI) and all its agents, acting as public servants, are bound in every case by strict duties of legality, impartiality and equality towards third parties.

There is no specific provision for a duty to disclose material facts to INPI, but the grounds for total or partial invalidation do include a failure to observe all mandatory formalities.

6 Patent infringement

6.1 What Constitutes Patent Infringement?

Patent infringement includes any of the following acts performed by an unauthorised third party within the Portuguese territory: manufacturing, producing, selling, storing, offering for sale, advertising or importing any goods protected or covered by a patent. The law further provides for indirect infringement of a patent, entitling the owner to take action against any third party which contributes to or helps other parties to undertake any infringing acts.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Although the doctrine of equivalents is not explicitly provided for in Portuguese law, since 2010 the Portuguese courts have applied it to national patents on several occasions, to help ensure legal certainty and fair competition at the European level. However, the finer points of equivalence may be difficult to argue before an open court, and a judge or arbitrator may well prefer to request expert evidence in this regard.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

If the act of infringement has n connection with the Portuguese territory, no liability can be attributed. However, cross-border injunctions can be applied to specific cases.

6.4 What are the standards for wilful infringement?

There are no specific provisions on wilful infringement. However, patent infringement is a criminal offence and the criminal responsibility of a wilful infringer can be raised in criminal proceedings before a criminal court. However, criminal proceedings concerning patent infringement are not common. Additionally, punitive damages are not available per se; but a court may well consider, within the margin allowed by all applicable criteria, a case of repeated or particularly grievous infringement.

6.5 Which parties can bring an infringement action?

The patent owner, a licensee or a sub-licensee (if the licence agreement duly provides for this) is entitled to bring an infringement action. Also, any party that fears or anticipates an infringement action may proactively file for a declaratory action of non-infringement.

6.6 How soon after learning of infringing activity must an infringement action be brought?

An infringement action may be filed at any time while a patent is valid. However, given the urgent nature of injunction proceedings, which are normally commenced at the beginning of such actions, the facts relating to the patent owner's awareness of the infringement should be as recent as reasonably possible.

6.7 What are the pleading standards to initiate a suit?

The plaintiff must be represented by a lawyer in court and must file all appropriate facts and arguments.

6.8 In which venues may a patent infringement action be brought?

If the patent infringement qualifies as a criminal offence under the law, the ordinary courts with criminal competence will handle the case. However, such actions are rare in Portugal. Other legal actions must be brought before the IP Court.

6.9 What are the jurisdictional requirements for each venue?

It is mandatory for criminal offences in relation to patents to be heard by the ordinary court with competence for the matter. Other legal actions relating to patents will be heard by the IP Court.

6.10 Who is the fact finder in an infringement action?

With regard to criminal offences, all parties are engaged to reveal the truth during the proceedings. In civil court, the parties typically act as such, bringing all pieces of evidence to court to support their respective allegations. The person who impartially makes the final determination of the facts of a case or controversy (ie, who determines what really happened) is the judge.

6.11 Does the fact finder change based on venue?

No.

6.12 What are the steps leading up to a trial?

An action against a potential infringer must always start with the patent owner filing a formal official complaint or court action.

6.13 What remedies are available for patent infringement?

With regard to criminal offences, imprisonment and monetary fines may be imposed on the infringer. Other remedies include:

• damages awards;
• injunctions prohibiting activities relating to the patent infringement; and
• orders for the destruction of infringing products or the means used for the infringement.

6.14 Is an appeal available and what are the grounds to appeal?

Appeals may be brought to the Appeal Court; and subsequent appeals may be brought to the Supreme Court.

The grounds for appeal can relate to facts implied in the decision and/or to the application of the law to the case.

7 Discovery

7.1 Is discovery available during litigation?

Portuguese law does not provide for a formal pre-trial discovery phase. However, the Industrial Property Code contains a body of injunctive measures to obtain and preserve evidence.

Given their urgency and relevance, these measures are typically requested in preliminary proceedings. Preliminary proceedings are normally followed by an action for main proceedings. This structure of preliminary proceedings followed by main proceedings is also a feature of arbitration proceedings.

Less frequently, preliminary measures may be decided ex parte. This may be highly valuable – for example, in urgent cases where there is an imminent need for the preservation of evidence or a risk of irreversible damage.

7.2 What kinds of discovery are available?

Although there is no formal discovery phase in Portuguese law, injunctive measures are available – for example:

• to obtain and preserve infringement evidence; or
• to support follow-up proceedings against an alleged infringer, including the disclosure and seizure of elements (eg, samples, materials, means of production and shipments) needed to prove infringement and other kinds of evidence (eg, banking, accounting or commercial documents).

7.3 Are there any limitations to the amount of discovery allowed?

Yes – for procedural efficiency, judges may limit the amount of discovery allowed. The amount of discovery allowable may also be restricted in view of competition law and confidential data protection requirements.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

The court will construe the claim terms in the decision.

8.2 What is the legal standard used to define claim terms?

There is no explicit provision for the construction of claim terms in Portuguese law; nevertheless, for reasons of legal certainty and consistency at the European level, the court will normally accept and use European legal references and case law.

8.3 What evidence does the tribunal consider in defining claim terms?

All kinds of evidence are allowable in defining the claim terms, including expert testimony. As expected, authoritative sources such as dictionaries, standards and scientific texts carry more weight than other sources.

9 Remedies

9.1 Are injunctions available?

Injunctions are available, especially to halt activities related to patent infringement and to apply corrective measures, including the recall and destruction of infringing products. Articles 345 and 346 of the Industrial Property Code define an unspecified injunction measure (345) and a seizure (346), which both specifically apply to industrial property rights and trade secrets. Article 340 provides another measure for the preservation of evidence: a specific type of injunction targeting actions to deter the destruction or loss of relevant evidence of IP infringement. The remaining generic injunction measures defined in Portuguese procedural law can also be sought.

9.2 What is the standard to obtain an injunction?

Injunctions are provided for under Portuguese law as provisional and protective measures. As such, they are always dependent on a main legal proceeding. Injunctions granted will cease if:

• the plaintiff does not initiate the main legal proceeding within 30 days; or
• the challenged industrial right lapses or ceases.

It is essential to determine whether a delay in provisional measures would cause a risk of loss of evidence or irreparable harm to the patent owner. Also, if the provisional measures could cause irreparable harm to the alleged infringer, the court must take this into account and take care to ensure that measures are not abused and are justified in the circumstances.

There is no strict time limit to file for preliminary measures, but an argument of irreparable harm will be less likely to prevail if it is delayed. Preliminary injunctions are frequently requested in Portugal as a quicker, more effective way of enforcing patent rights.

9.3 Are damages available?

Yes.

9.4 What types of damages are available?

The procedural law in force in Portugal provides that: "In determining the amount of compensation for losses and damage, the court shall take into account, in particular, the profit obtained by the infringer and the resulting damage and lost profits suffered by the injured party."

If these criteria are found to be impossible to follow, the court can alternatively define an amount based on equity (unless the infringer successfully opposes this) – for example, quantifying the amount that the patent owner would have received from the infringer if the latter had asked for a licence, plus all costs associated with IP protection and incurred in the infringement investigation.

The court can also consider the reputational and image damages (moral damages) arising from the infringer's illegal conduct, if petitioned to do so. Punitive damages cannot be claimed.

9.5 What is the standard to obtain certain types of injunctions?

It is essential to determine whether a delay in provisional measures would cause a risk of loss of evidence or irreparable harm to the patent owner. Also, if the provisional measures could cause irreparable harm to the alleged infringer, the court must take this into account and take care to ensure that measures are not abused and are justified in the circumstances.

If an injunction is heard without the alleged infringer being given notice or attending, the court will require good reasons for not giving the other party an opportunity to respond. For example, beyond the seriousness of the infringement and the impossibility of its reparation:

• the reasons for the injunction should be so urgent that the other party cannot be heard; or
• there should be a serious risk of evidence or property being lost if notice were given.

The plaintiff will need to disclose all relevant facts to the court.

9.6 Is it possible to increase or multiply damages due to a party's actions?

The beginning of the infringement is the starting point for the calculation of damages, which normally tends to be closely linked to the factual figures produced during the case. However, in some cases, reputational and image damages (moral damages) can be claimed on top of the nominal damages. A court will consider, within the margin allowed by the applicable criteria, a case of repeated or particularly grievous infringement.

9.7 Are sanctions available?

Yes.

9.8 What kinds of sanctions are available?

The sanctions are usually in the form of a fine, which is payable daily until the injunction is complied with.

9.9 Can a party obtain attorneys' fees?

There is no record or tradition of extensive recovery of attorneys' fees in the Portuguese courts. The losing party is responsible for the fees and costs of the successful party, but legal fees are normally capped. It is anticipated that larger portions of legal fees should be recoverable by successful parties in the future. However, some of the costs can be fully claimed if they are effectively related to the collection of evidence on, investigation and prevention of industrial right violations.

9.10 What is the standard to obtain attorneys' fees?

See question 9.9.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

According to the Industrial Property Code (Article 31, number 4), unless the parties agree otherwise, the licensee is entitled to the same rights and privileges as the licensor. The patent rights can be licensed for full or partial exploitation either in the entire Portuguese territory or in a defined zone. The licence can be valid for the entire duration of the patent or for a shorter period, as agreed. The licence can be exclusive or non-exclusive. Generally, in the case of an exclusive patent licence agreement, the licensor may also exploit the licensed patent unless this right is expressly voided by the contractual parties (Article 31, number 7).

10.2 What limits can a patent owner impose on a licence?

Examples of limits or restrictions which can be imposed by the contract include:

• the full or limited scope of the licence rights;
• the duration of the licence;
• the relevant territory; and
• the exclusive or non-exclusive nature of the licence.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

The Competition Act (19/2012) closely mirrors the EU competition law framework. Relevant case law and decisions of the Competition Authority and the Competition, Regulation and Supervision Court on matters relating to intellectual property have been issued. Antitrust matters may be successfully argued by a defendant in a patent lawsuit – notably in a counterclaim defence; but the court will assess and decide on them naturally, taking into consideration all relevant facts and the applicable law – that is, balancing the needs for fair IP protection and antitrust defence.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.