Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The Portuguese Industrial Property Code does not provide for substantively different exceptions to patentability from the international standards on patent law. Specifically, it is not possible to protect, as a patent right:

  • computer programs or software as such with no technical contribution;
  • schemes, rules or methods of doing business;
  • methods for performing purely mental acts or playing games; and
  • methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods.
Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The rule is that the rights to a patent belong to the inventor or his or her successors in title.

However, if an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the company. The same happens with research and development activities; the patent ownership belonging to the public entity.

If two or more persons, including joint ventures, have made an invention, any of them may apply for a patent on behalf of all.

Patent ownership is officially recorded at the Patent Office and transferred by a contract which must also be recorded at the Patent Office and shall be published in the Industrial Property Bulletin.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

As from the filing of the patent application (or priority, if applicable) and the grant of the patent, it can take around two to three years.

The costs – the Patent Office’s fees – are between €100 and €400.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Yes, it is possible to request for accelerated examination under the Patent Prosecution Highway Pilot Programme.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

A patent application must contain the following:

  • the title of the invention;
  • the claims as to what is considered new and what characterises the invention, and it must define the object of the protection requested, be clear, concise, correctly written and based on a description, and contain:
    • an introduction mentioning the subject of the invention and the technical characteristics required to define the elements claimed, but that, in combination, form part of the state of the art; and
    • a description preceded by the words ‘characterised by’ and describing the technical characteristics in connection with the characteristics indicated in the previous point, defining the extent of the protection requested.
  • a description of the invention (providing a clear indication, with no provisos nor omissions, of everything that constitutes the invention and containing a detailed explanation of at least one embodiment of the invention, so that the skilled person may carry it out);
  • drawings required for a perfect understanding of the description; and
  • a summary of the invention, intended for publication in the Industrial Property Bulletin, which:
    • consists of a brief overview of the description, claims and drawings and preferably shall not contain more than 150 words; and
    • is exclusively for technical information purposes and shall not be taken into consideration for any other purpose, such as determining the extent of the protection requested.

 

The specific formal requirements for a patent application are defined in guidelines available at the Patent Office website dating from 2014 (which are being reviewed) and also in Order No. 6142/2019.

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

No.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Yes, it is possible to file for a divisional application in cases where the initial application lacks the requirement of the unity of the invention and as long as the divisional application only contains elements that do not extend beyond the content of the initial application.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes, the following decisions may be appealed (before the IP Court):

  • those granting or refusing intellectual property rights; and
  • those regarding transfers, licences, declarations of expiry or any other acts that affect, alter or extinguish intellectual property rights.
Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Yes. It is possible to file oppositions before the Patent Office within two months (extendable) after the patent application is published in the Industrial Property Bulletin.

Third-party observations are also admissible during the patent application procedure.

It is possible to apply for a modification of a decision of the Patent’s Office. This is considered by a different, hierarchically superior, member of the Patent Office.

Finally, the Patent Office’s decisions granting or refusing a patent application may be appealed before the IP Court.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

No.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Patents can be limited, provided that such amendments do not affect the elements of the patent that are essential and characteristic thereof. An amendment application cannot be opposed but any third party who might be ‘directly and effectively affected’ by the Patent Office’s decision may appeal the decision.

Patents may be limited (the amended claims shall not extend the protection of the patent as granted) either via the administrative route before Patent Office or the judicial route before the IP Court.

The Industrial Property Code (IPC) does not expressly provide for the requirements that need to be examined. The Patent Office will assess and decide on whether the amended claims reduce the scope of protection of the patent as granted, and whether the amended claims are clear, supported by the description and do not add matter beyond the application as filed. A decision by the Patent Office takes approximately two to five months. If the limitation is granted, it publishes a notice of the alteration of the claims. The IPC does not provide for a deadline for third parties to oppose the limitation application but any third party who might be ‘directly and effectively affected’ by the decision may appeal the decision within two months of the respective publication (or the date of the respective certificate requested by the appellant, if made earlier). If the amendment is not granted, the Patent Office only communicates the decision to the applicant. The patentee may appeal this decision to the IP Court, within two months from the date of reception of the communication of the decision denying the limitation.

Althoug, the patent holder is entitled to limit the claims before the IP Court, this is uncommon in Portugal.

The jurisdiction to revoke a patent lies only with the IP Court.

Patent duration

How is the duration of patent protection determined?

The duration is 20 years from the date of application.

Law stated date

Correct on

Give the date on which the information above is accurate.

22 March 2021.