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INFORMATION FROM THE CONTRACTING / EXTENSION STATES

PT Portugal

Impact of the European Patent Convention on national law

On 1 January 1992, Portugal became the sixteenth Contracting State to the EPC1.

A. NATIONAL LEGAL BASES

The Portuguese provisions implementing the EPC (Decree-Law No. 42/92 of 31 March 1992) entered into force on 5 April 1992. Harmonisation of patent law is now under way, and new national legislation is expected to enter into force during the first quarter of 1993. Further information will be published in the EPO Official Journal in due course.

The main texts currently in force are as follows:

1. Industrial Property Code No. 30 679 of 24 August 1940

2. Decree-Law No. 42/92 of 31 March 1992

3. Order No. 599/91 of 4 July 1991 regarding fees

B. APPLICATION OF THE EPC IN PORTUGAL

The main provisions relating to application of the EPC in Portugal are summarised below. The information is structured in the same way as in the EPO brochure "National Law relating to the EPC". This summary may therefore be used as a supplement to the brochure until a revised edition is published.

I. Filing of European patent applications (Article 75 EPC -Sections 2 and 3 of Decree-Law No. 42/92)

European patent applications may be filed with either the EPO or the Portuguese Industrial Property Office (INPI)2:

Instituto Nacional da Propriedade Industrial (INPI)

Campo das Cebolas

P-1100 Lisboa

Applicants with residence or principal place of business in Portugal must file with INPI any European patent application unless it claims the priority of an earlier filing in Portugal or if the invention claimed therein is considered secret.

European patent applications filed with INPI may be drawn up in any of the languages referred to in Article 14(1) and (2) EPC.

European patent applications filed with INPI in a language other than Portuguese must be accompanied - unless the priority of an earlier Portuguese national filing is claimed - by a translation into Portuguese of the description, claims and abstract, and by a copy of the drawings even if these contain no text for translation.

II. A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC - Section 4 of Decree-Law No.42/92)

Under Section 4(1) of Decree-Law No. 42/92 a published European patent application designating Portugal enjoys provisional protection from such time as INPI makes available to the public a Portuguese translation of the claims and a copy of the drawings (even if the latter contain no text for translation).

B. Filing of a translation of the claims (Article 67(3) EPC -Sections 4, 7 and 11 of Decree-Law No. 42/92)

Under Section 7 of Decree-Law No. 42/92, for applicants with neither residence nor principal place of business in Portugal the claims and any text in the drawings must be translated into Portuguese under the responsibility of a domestic representative.

The applicant has to pay INPI a presentation fee (PTE 500), filing fee (PTE 5 000) and publication fee (PTE 6 000).

INPI makes the translations available to the public by publishing details in the Industrial Property Bulletin identifying the European patent application; thenceforward the translation can be consulted and copies obtained.

The translation may be corrected at any time. The corrected version takes effect once it is made available to the public, and a presentation fee of PTE 500 paid.

III. Filing of a translation of the patent specification (Article 65 EPC - Sections 5 to 8 and 11 of Decree-Law No. 42/92)

A European patent designating Portugal has effect in that country only if a Portuguese translation of the specification as granted, or as amended following opposition proceedings, is filed with INPI.

The translation must be filed within three months of publication in the European Patent Bulletin of the mention of grant or the decision to maintain the patent as amended. Within the same time limit the patentee must also pay the presentation and publication fees (PTE 500 and 6 000), and - if he has not already filed the translation of the claims to secure provisional protection - the filing fee (PTE 5 000). The translation of a European patent specification must be accompanied by a copy of the drawings, even if these contain no text for translation.

For patentees with neither residence nor principal place of business in Portugal, the patent specification must be translated into Portuguese under the responsibility of a domestic representative.

Once the requisite fees have been paid, INPI publishes in the Industrial Property Bulletin a mention that the translation has been filed.

The translation may be corrected at any time. The corrected version takes effect once it has been made available to the public, and a presentation fee of PTE 500 paid.

IV. Authentic text of a European patent application or European patent (Article 70 EPC - Sections 10 and 11 of Decree-Law No.42/92)

The translation is the authentic text if the scope of protection is narrower than in the language of the proceedings. This does not apply, however, in revocation proceedings. Regarding the rights of a prior user where a translation is corrected, Section 11 of Decree-Law No. 42/92 provides for safeguards corresponding to those referred to in Article 70(4)(b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC- Section 15 of Decree-Law No. 42/92 - Section 257 of Industrial Property Code No. 30 679 - Order No. 599/91)

Renewal fees are payable to INPI for the years following that in which the European Patent Bulletin mentions grant of the European patent.

Renewal fees fall due during the period in respect of which they are payable. They may be paid in advance. INPI does not notify patentees if they fail to pay.

There is also a six-month period of grace during which renewal fees can still be paid, together with a 50% surcharge.

If a patentee does not pay the surcharge, INPI publishes his loss of rights. He then has one year as from publication to request re-establishment of rights, provided he also pays a surcharge equal to three times the fee due.

A domestic representative has to be appointed for payment of renewal fees.

Renewal fee rates are currently as follows:

VI. Conversion of European patent applications into national patent applications (Articles 135 to 137 EPC - Section 12 of Decree-Law No. 42/92)

Portuguese law makes provision for conversion in the case of deemed withdrawal under Article 77(5) EPC, or under Article 90(3) EPC where the translation in the language of proceedings was not filed in time.

The request for conversion must be filed within three months of the EPO's notifying the applicant that the application is deemed withdrawn (Article 135(2) EPC). Within two months of INPI's receiving his request, the applicant must then pay the fees payable on filing a Portuguese application - viz. the presentation fee (PTE 500), filing fee (PTE 5 000) and publication fee (PTE 6 000) - and file a Portuguese translation of the application.

Section 12(5) of Decree-Law 42/92 also requires applicants with neither residence nor principal place of business in Portugal to appoint a Portuguese representative to pay the above fees and file the Portuguese translation of the application.

The European patent application is considered a Portuguese one as from the date on which INPI receives the request for conversion.

VII. Conversion of European patent applications into national utility model applications (Article 140 EPC - Section 13 of Decree-Law No. 42/92)

Under Portuguese law, a European patent application may also be converted into an application for a Portuguese utility model in the circumstances as referred to under Section VI above. Conversion is also possible if the European application is refused, withdrawn, or deemed withdrawn.

The procedure is the same as for conversion into a national patent application (see Section VI above).

VIII. Payment of fees

Payments must be made to INPI in cash or by cheque by a domestic representative.

IX. Miscellaneous

1. Simultaneous protection (Article 139(3) EPC - Section 14 of Decree-Law No. 42/92)

If a national patent covers the same invention as a European patent, the national patent ceases to have effect either on expiry of the opposition period with the European patent unopposed or on the date any opposition proceedings are definitively terminated. A national patent has no effect if granted after these two dates.

2. Territorial field of application of the EPC (Article 168 EPC)

The EPC applies throughout the territory of Portugal.

C. OTHER INTERNATIONAL TREATIES

The Patent Cooperation Treaty (PCT) entered into force for Portugal on 24 November 19923.

Portugal is not a party to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms.