The Portuguese Government has submitted for approval of the Parliament a proposal for a new Industrial Property Code which will repeal and substitute the most important IP law in force.
The current IP Code was adopted in 2003 (Decree Law 36/2003, of 5 March) and amended in 2008 (Decree Law 143/2008, of 25 July). According to its preamble the draft proposal has the following goals:
a) Implementing the recast of the EU trademark directive - Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015;
b) Implementing the EU trade secrets directive - Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016;
c) “Simplifying and clarifying administrative procedures of granting, maintenance and extinction of industrial property rights”;
d) “Adopting mechanisms to strengthen the rights protection system and to give effectiveness to remedies against infringements”.
The law proposal is undergoing the normal legislature procedures in the Parliament’s Committee on Economy, Innovation and Public Works, which include opinions from public and private bodies and associations. However the time available for discussions is apparently too short. The proposal sets 1 July 2018 as the date for entering into force of the new IP Code with regard to the trade secrets provisions, and such date is already in slight delay considering that the deadline for implementing the trade secrets directive is 9 June 2018.
The changes provided for by the proposal are substantial in number and extension and touch upon all industrial property rights chiefly patents, utility models, designs or models, trademarks, geographical indications and appellations of origin besides the rules of trade secrets and enforcement. We will report the amendments at length in a near future. Some of the most noteworthy amendments proposed are the following:
The draft proposal allows for patent ‘double-protection’ (or so-called ‘double-patenting’). The current IP Code prohibits double-protection of the same invention by both a Portuguese national patent (or utility model), and a European patent with effect in Portugal, i.e. a patent obtained by validating an European patent in Portugal after grant by the European Patent Office, if both patents have an identical priority date and originate from the same inventor.
The draft clarifies the scope of patents and provides for new rights against indirect patent infringement. The current IP law foresees no protection against indirect infringement.
The Government drafters propose amending Law 62/2011. The Law 62/2011 is a sui generis law addressing specific industrial property disputes between holders of patents related to medicinal products and companies that produce or distribute generic medicines. The law established a regime of “mandatory arbitration” which has given place to no few controversies. The proposal now submitted to the Parliament revokes the “mandatory” nature of the arbitration. This means in practice that generic companies will not be obliged to litigate in arbitration and the future infringement cases will be filed at the Intellectual Property Court instead of Arbitral Tribunals. If approved by the Parliament, the amendment will enter into force 30 days after publication of the new law.
Supplementary Protection Certificates
The draft foresees that the National IP Office may declare ex-officio the invalidity of an SPC where the patent has been declared invalid.
The draft proposal has redefined the protectable subject matter and added a new exception concerning food products or processes for the preparation, production or confection of such products. The possibility of granting of utility models without substantive examination is eliminated.
The proposal foresees a new administrative procedure for invalidation of registered designs. The current law has no such procedure, only courts may declare the invalidation of a registered design right.
The proposal reflects the provisions of the Directive (EU) 2015/2436 which brings some important innovations into the national law, namely the request of evidence of use as a defence in opposition proceedings, the intervening rights of proprietor of later registered trademarks as defence in infringement proceedings, new right to prevent the entry of infringing goods in transit where such goods come from third countries, and the rule that the trademark duration shall be counted from the date of filing instead of the granting date.
The law drafters decided to maintain the principle of ex-officio examination of relative grounds of refusal according to which the National IP Office has the power to refuse applications on the basis of its own ex-officio examination on grounds of identity or confusingly similarity with prior trademarks. However in case a provisional refusal is based on a trademark registered for more than 5 years, the applicant will have the right of requesting evidence of use.
Noteworthy is also that the Government has opted to implement the Directive to its full extent, including article 45 of the Directive (procedure for revocation or declaration of invalidity) the implementation of which was only mandatory by 14 January 2023.
Unfair competition and trade secrets
The minimum and maximum fine penalty foreseen for unfair competition acts amounting to administrative offences are substantially increased from 3000-30000 Euros to 5000-100000 Euros (for legal persons) and from 750-7500 Euros to 1000-30000 Euros. The same range of penalties is proposed for the violation of trade secrets.
The draft proposes that trade secrets benefit, with some adaptations, from the civil enforcement procedures and measures provided for industrial property rights and provides for rules of preservation of confidentiality of trade secrets in the course of legal proceedings.
The draft foresees that the criminal authorities will be able to proceed to a direct exams of suspicious goods. The current law provides the need of an expert examination which causes additional delay. The proposal further establishes a deadline of 10 days for the criminal authorities informing the IP right holder and his licensee of the facts concerning a possible infringement. Furthermore, the costs with storing and destroying seized items are proposed to be considered costs of the proceedings in principle to be borne by the infringing party.