At a glance: patent enforcement proceedings in Portugal

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Patent litigation generally takes place before the Intellectual Property Court (IP Court), which is a specialist state court, with jurisdiction at a national level, and is competent to handle all actions concerning industrial property in all forms as provided in law, including both patent enforcement and invalidation proceedings.

In actions related to pharmaceutical patents and generic medicines, according to Law 62/2011, of 12 December, amended by Decree-Law 110/2018, of 10 December, the patent holder has 30 days upon the publication, by the relevant medicines agency (INFARMED), of a marketing authorisation application for a generic product, to submit the case to voluntary arbitration proceedings, with the agreement of both parties, or to file a legal action before the IP Court.

Patent infringement is considered a criminal offence, so criminal proceedings are also available and are conducted before the criminal courts, although this route is not usual.

What is the format of a patent infringement trial?

Disputes are decided by a single judge in the first instance, who conducts the entire trial. The IP Court is currently composed of three judges.

The parties or their representatives, if they wish to, may be present as well.

Technical advisors to assist each of the parties during the trial may be appointed: they assist the lawyers and have the same powers granted to the lawyers during the hearing (notably, they can pose questions to the witnesses).

It is also common for the judge to be assisted by technical advisors during the trial: they are appointed by the court, upon the recommendation of the Portuguese public institution agreed between the parties to that effect, based on a discussion between the parties on the characteristics that he or she should have in order to assist the court in technical matters.

The following acts are conducted during the trial phase:

• the parties’ deposition (if it was requested by any of the parties);
• clarifications of the experts about the written report provided (if an expert review was conducted and clarifications about the final report were requested by the parties or ordered by the judge); and
• the questioning of witnesses and expert witnesses, which is generally conducted in person at the hearing or by means of teleconference, by the parties and generally also the judge and the technical advisor assisting the judge, with cross-examination permitted but limited to the clarification of aspects that the witness has already responded to.

Documents, affidavits, legal opinions and expert opinions can also be submitted in first instance as evidence and be discussed during the trial. Exceptionally, documents conveyed by the witnesses during the trial may be attached to the proceedings.

At the end, lawyers are invited to present orally their final pleadings. Taking into consideration the evidence that was produced in the proceedings, lawyers of both parties convey their conclusions, factual and legal. Each lawyer may reply to the opposing side’s submissions only once. It is very common for the parties to jointly request and the judge to accept the submission of the final pleadings in writing in complex patent cases.

A trial typically lasts between two days and two weeks, depending on the court’s agenda and on the number of witnesses appointed by the parties and heard at the trial. If any of the witnesses are foreign and require an interpreter, this may delay the trial.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

For establishing infringement, the burden of proof lies with the claimant patent holder. There is a reversal of the burden of proof for process claims and process patents of a new product in patent enforcement proceedings (both in the main proceedings and in proceedings for preliminary injunctions).

For the invalidity and unenforceability of a patent, the burden of proof lies with the party that alleges the facts that underlie the invalidity and unenforceability.

In short, the civil rule is that whoever seeks to enforce a right must provide evidence proving the facts that establish those rights; and whoever invokes a fact aiming at preventing, modifying or extinguishing a right must prove that fact. The civil law provides, however, for some general regimes on the reversal of the burden of proof.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Patent holders have legal standing to sue. Licensees or sub-licensees also have standing to enforce a patent, alone or together with the patentee, since they enjoy all the powers of the patent holder except as otherwise provided in the licence or sub-licence agreement, which must be registered with the national patent office.

A potential infringer may bring a declaratory non-infringement action, which could give him or her the advantage in obstructing any infringement action from the patentee, as it could be considered by the court as lis pendens (assuming that the grounds in both cases would be the same), before or after a patent infringement action has already been brought against him or her.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

According to the Industrial Property Code (IPC), the patent holder has the right to prevent any parties that supply or offer to supply a person who is not entitled to exploit the patented invention with any of the means, relating to an essential element of the invention, for putting the invention into effect, when he or she knows or should know that those means are suitable for putting the invention into effect and aim at putting the invention into effect (subject to the same exception of article 26(2) of the Agreement on a Unified Patent Court for means that are ‘staple commercial products’).

Apart from this specific provision included in the IPC, the general civil and criminal law may apply on contributing or facilitating the infringement, as well as the regime applicable to more than one defendant having taken part on the infringement.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit under different civil mechanisms (which have different requirements), depending on the exact facts that support the infringement and on the claims being made.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

According to the IPC, a patent confers its owner with the right to prevent third parties, without the consent of the patentee, from exploiting the protected invention, notably manufacturing, offering, storing, putting on the market or using an infringing product, or importing or possessing it, for any of the mentioned purposes, in the Portuguese territory, while the patent rights are in force.

Any activities that take place outside Portugal may support a charge of patent infringement in Portugal if any of the above-mentioned acts, which would constitute an infringement of the patent, take place in Portugal.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

There is no provision of Portuguese law that provides for ‘equivalents’ for determining the extent of protection by a patent. However, that doctrine has been invoked in patent litigation cases and has been considered and applied by the courts and arbitral tribunals, although not in a harmonised way.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

There is no discovery phase in judicial proceedings in Portugal. However, the IPC contemplates measures and procedures that correspond to articles 6 and 7 of the EU Enforcement Directive.

There is no significant case law in Portugal that could give an indication about the level of the evidence of the infringement or prospective infringement that would be necessary to succeed on an application for those orders.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Main actions on validity and infringement (combined or not with damages) may be litigated at the same time.

A patent lawsuit in the IP Court, with minor procedural issues, usually takes one-and-a-half to three years to obtain a first-instance decision, but the duration will always depend on the complexity and the number of the matters involved. Typically, proceedings take longer if, for example, the case involves foreign companies, the parties request for a technical expertise review to be carried out and new documents (technical or otherwise) are submitted by the parties during the course of the proceedings.

A preliminary injunction may take eight months to a year-and-a-half to be decided in the first instance.

In the appellate courts, a decision can be expected within one to two years.

Arbitral main actions typically take one to two years from the filing of the statement of case to the decision at first instance (but see above regarding factors that may cause delay). Objections to the jurisdiction of an arbitral tribunal to decide on patent validity was commonly raised by the defendants in patent proceedings brought under Law 62/2011 before an arbitral tribunal. The matter is still under discussion. For this reason, since separate challenges can be brought on the matter, the timeline may vary. Some arbitral panels have decided to stay the arbitral infringement case pending a revocation action before the IP Court against the asserted patent.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Several aspects shall be considered in what concerns predictable costs:

• The value of the proceedings: typically set at €30,000.01 in cases where patent rights (as immaterial rights) are at stake. In such a case, each party will have to pay €1,224 (in different phases of the proceedings and the judicial fee of the appeal is of €306). However, the court may set a different value for the case, considering different aspects, for example the amount of pecuniary interest of the claimant and the complexity of the case, which may lead to a substantial increase of the costs. It is, therefore, hard to predict which will be the costs of the patent lawsuit.
• The amount that each party shall pay at the end of the proceedings: according to Portuguese civil procedural law, at end of the proceedings, the court will fix the responsibility of the parties for the costs to the extent to which the action was unsuccessful, being the due amount paid by the losing party directly to the court.
• Other administrative costs: translators, advisors to the court and experts.

Furthermore, the winning party may ask the losing party to proceed with the payment of all the court fees paid by the wining party, plus 50 per cent of all judicial fees paid by all the parties as a fictional compensation for the attorney’s fees incurred, as well as the costs incurred with translations, witnesses’ travel expenses, the court’s advisor, experts (when this is ordered by the court) and certificate fees (when ordered by the court).

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

All court decisions are, in principle, subject to appeal in one or two degrees. The appeal against a decision of the IP Court (first instance) is to be filed to the Lisbon Court of Appeal (LCA), both on matters of fact and of law. The decision of the LCA may be subject to an appeal to the Supreme Court of Justice (SCJ), depending on the circumstances of the case. The SCJ only decides matters of law. In the LCA and SCJ, the appeal is assessed by a panel of three judges and, in principle, the appeal does not have a suspensive effect.

Should any issue of unconstitutionality arise, appeals may be filed to the Constitutional Court subject to some formal requirements being met.

Most interim decisions are appealable along with the final decision, although some interim decisions may be subject to an autonomous immediate appeal in certain cases expressly provided in the law.

Preliminary injunctions follow the same regime, although it is generally not possible to appeal to the SCJ except in very special and rare cases.

In pharmaceutical arbitral cases brought under Law 62/2011, the appeal to the SCJ is admissible only on the very special circumstances that govern also the appeal for preliminary injunctions.

Generally, new evidence at the appellate stage is not allowed.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

All these matters could be argued by a defendant in a patent lawsuit and these will be decided by the IP Court.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

The parties are entitled to seek alternative means of dispute resolution such as mediation or voluntary arbitration in patent cases. However, this route is almost never used for patent disputes. However, the parties often manage to reach an alternative solution to litigation by executing an agreement either before or during pending proceedings.

Law stated date

Give the date on which the information above is accurate.

22 March 2021.