An extract from The Patent Litigation Law Review, 6th Edition

Types of patent

Inventions can be protected by two types of industrial property rights: patent and utility models. Patents can be granted to any type of invention in any field of technology, whether it is a product or a process, as well as for new processes for obtaining products, substances or compounds that already exist.

Apart from applying for a national patent through a national route in accordance with the Portuguese Industrial Property Code (IPC),2 it is also possible to apply for protection at both the European and international levels under the European Patent Convention and under the Patent Cooperation Treaty, respectively.

The duration of a patent is 20 years from the date of application, and the invention must have novelty, inventiveness and industrial applicability. At the European level, an extension may be granted to specific pharmaceutical and plant protection products that have been authorised by regulatory authorities by means of a supplementary protection certificate (SPC). An SPC can extend a patent right for a maximum of five years.3 Furthermore, an additional six-month extension is also available in Portugal if the SPC relates to a medicinal product for children for which data has been submitted according to a paediatric investigation plan.4

Applications for patents must always be examined. The examination is a crucial part of the patent grant. New inventions involving an inventive step can also be protected as utility models if they have an industrial application.

Apart from applying for a utility model through a national route in accordance with the IPC, it is also possible to apply for protection at the international level under the Patent Cooperation Treaty. The duration of a utility model is six years from the date of application, and it can be renewed for up to 10 years.

Although the requirements for protection are similar for both types of protection of inventions, utility models are not available for inventions dealing with biological material or chemical and pharmaceutical substances or processes. The main difference between a patent and a utility model is that in the latter, a mere technical advantage will suffice for the respective protection, provided that it has novelty, inventiveness and industrial applicability.

Substantive law

i Infringement

Articles 101(1) and 101(2) of the previous IPC already provided that the patent confers upon the holder the exclusive right to use the invention anywhere in the Portuguese territory, which translates into the right to prevent others from manufacturing, offering, storing, marketing or using the patented product, or importing or possessing it for any of the mentioned purposes without his or her consent.

Article 102 of the current IPC further lists the following specific prohibited conduct:

  1. the use of a protected process (or the offer to use the process, if the third party knew or should know that the unauthorised use is prohibited);
  2. the offer, stockpiling, marketing, use and the importation for any of the previous conducts of the products directly obtained by the process that is the subject of the patent; and
  3. indirect infringement.7

Proceedings can be brought for preparatory acts, although difficulties may occur in relation to the evidence of those acts.

In civil proceedings – before the judicial courts and arbitral tribunals – liability for infringement lies with the civil liability of the infringer, namely the company that performed the infringement. The liability of foreign suppliers is difficult to discuss and prove in civil proceedings and is not usually a topic in those actions.

In criminal proceedings – before the criminal courts – criminal liability lies with the company that infringed IP rights but can also lie with the directors of infringing companies.

In accordance with Article 98 of the IPC,8 'the scope of protection conferred by the patent shall be determined by the contents of the claims and the description and drawings shall serve for the interpretation thereof'. This means that patent claims are commonly interpreted under this legal criterion.

Neither this provision nor other provisions of the Portuguese law foresee equivalents for determining the extent of protection by a patent; however, the doctrine of equivalents is regularly invoked in patent litigation cases and is also regularly considered and applied by the courts and arbitral tribunals.9

Furthermore, considering the fact that Portugal is a member of the European Patent Convention (EPC), although the Protocol on the Interpretation of Article 69 European Patent Convention of 5 October 1973, as revised on 29 November 2000, has no equivalent under Portuguese Law, it should be applied by the Portuguese courts and tribunals as legal framework for the interpretation of the patent claims and determination of their scope of protection, regardless of the patents being European or Portuguese, for reasons of equality and legal certainty.

The prosecution history may also play an important role in determining the scope of patent protection, notably whenever the doctrine of equivalents is argued before a Portuguese court.

The contents of an opposition, a reply, an amendment or any submitted document filed by the parties, subject to the previous analysis of the Patent Office, will also play an important role in determining the scope of a patent. There is no estoppel defence or estoppel effect under the Portuguese civil procedural rules, and there is no precedent rule.

ii Invalidity and other defences

Under Article 32 of the IPC, patents, utility models and registrations shall be totally or partially null if:

  1. their object cannot be protected;
  2. when granted, procedures or formalities essential to the grant of the right have been omitted; or
  3. public rules have been violated.

In addition, under Article 114 of the IPC, a patent shall be null and void if:

  1. its object does not meet the requirements of novelty, inventive step and industrial application;
  2. its object cannot be protected according to the applicable provisions of the IPC;
  3. it is recognised that the title or heading given to the invention covers a different object; or
  4. its object has not been described such that anyone skilled in the art can carry it out.

Under Article 33 of the IPC, patents, utility models and registrations can be totally or partially annulled if the holders are not entitled to them, namely if:

  1. the right does not belong to them; or
  2. they were granted with disregard for the rights set forth in the procedural rules set out in the IPC.

One or more claims may be declared null and void or annulled, but partial nullity may not be declared, nor may a claim be partially annulled. The typical grounds for an invalidity action are the lack of novelty or inventiveness, or industrial applicability (industrial use). 'Insufficient disclosure' has also been raised in recent cases.

The legal and technical discussions on those grounds do not differ from those of the EU countries – and the EPC States – meaning that jurisprudence from the European Patent Office (EPO) is the most relevant basis for those discussions.

In relation to the obviousness or inventiveness test, the EPO's jurisprudence on this matter is generally followed – notably the 'could/would' approach to determine whether a patent is 'obvious' or 'inventive' in view of the prior art. In addition, consideration of the person skilled in the art in each case is defined under the EPO's case law. For the insufficient disclosure argument, the plausibility test is normally considered.

In relation to other defences, although rarely applied in practice, the interested parties can object to patent infringement by invoking:

  1. legal limitations of the rights conferred by a patent (e.g., acts performed in private and not for commercial purposes or only performed exclusively for trial or experimental purposes – Bolar exemption);
  2. exhaustion of rights (as the rights conferred by a patent do not allow its holder to forbid acts related to the products protected by it after its sale by the patentee or with his consent, in the European economic area);
  3. non-opposability (as, in general, rights conferred by a patent are not opposable in Portuguese territory before the date of the application or of priority if it is claimed against someone who, in good faith, has learned of the invention by his or her own means and used it or made effective, serious preparations to use it); or
  4. the existence of a licence.