Intellectual creations can be covered by industrial property rights. These rights ensure the monopoly over or exclusive use of a given invention, aesthetic creation or sign used for goods and businesses.
Industrial property, copyright and associated rights constitute intellectual property.
Decree-Law No 143/2008 on industrial property rules and procedures was adopted to reduce the time taken to register industrial property, to simplify formalities for individuals and businesses, and to create new services to encourage innovation.
Industrial property rights
Industrial property rights
Issues relating to industrial property (patents, trade marks and designs) come under the responsibility of the National Industrial Property Institute (INPI). The ‘On-the-Spot Trade Mark’ was created to simplify the associated process and reduce costs.
Industrial property is intended to protect inventions, creations and signs, whereas copyright protects literary and artistic works.
Issues relating to copyright over literary and artistic works (including original creations of literature and art) and associated rights can be raised with the Portuguese Society of Authors (SPA), which is the largest and oldest copyright management body.
Intellectual protection bodies
The National Industrial Property Institute (INPI) works to protect and promote Industrial Property, both nationally and internationally, in accordance with the policy to modernise and strengthen the country’s business structure, particularly in collaboration with the international organisations of which Portugal is a member.
The World Intellectual Property Organization (WIPO) is dedicated to developing a balanced international industrial property system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest.
The European Patent Office (EPO) is an intergovernmental organisation that was set up in 1977 on the basis of the European Patent Convention (EPC) signed in Munich in 1973. The organisation currently has 38 member states.
The Office for Harmonization in the Internal Market (OHIM) is the official body responsible for registering trade marks and designs in the European Union. It acts as a gateway to the Single Market, offering protection for intellectual and industrial property rights in a market consisting of 27 countries and nearly 500 million inhabitants.
Protecting intellectual property rights abroad
Industrial property rights (trade marks, patents, designs or models, etc.) are territorial rights, which are only protected in the country having granted this protection. As a result, registration in Portugal with the INPI does not protect the trade mark, patent or design in any other country.
In terms of protection abroad, the application for registration or protection in Portugal, after a period of 6 or 12 months, grants a priority right to submit an application in another territory: in any member country of the World Trade Organization (WTO) or of the Paris Convention for the Protection of Industrial Property (PUC).
After this period, the application made abroad will be deemed to have been submitted on the date of the application originally made in Portugal (referred as to the ‘claim to priority’), which can represent a huge advantage.
Combating counterfeiting and piracy
Patents, trade marks, designs or models and other forms of protection prevent a third party, without the holder’s consent, from using a product or process covered by a patent, an identical or similar trade mark for the same or similar goods, or the protected design or model.
Holders of protected or registered industrial property rights can ask for offenders to be punished by the courts through criminal proceedings, by submitting a complaint to the competent authorities: the Food Safety and Business Inspection Authority (ASAE), the Republican National Guard (GNR) and the Public Prosecution Service.
The INPI is unable to accept or forward complaints about infringements.
Infringements incur non-contractual civil liability, and the offender can be ordered to compensate the holder of the infringed right.
Anyone who infringes someone else’s rights can also be sent to prison, fined and ordered to pay compensation or be forced to cease trading (for example, through the closure of their establishment).
There is also the Arbitration Centre for Industrial Property, Domain Names, Company Names and Designations (ARBITRARE), which can be asked to settle any disputes concerning industrial property, domain names (.pt), company names and designations, where these disputes do not involve unavailable rights and where, in accordance with a special law, they do not come under the exclusive jurisdiction of the courts or compulsory arbitration.
The proceedings are bilingual (Portuguese and/or English) and are managed electronically so that the parties do not need to travel to the offices of ARBITRARE. The dispute must be settled within a maximum of 6 months, except in highly complex cases. The arbitrators’ decision has the same force as the decision of an ordinary court of first instance, and the costs are much lower than the costs of referring to the courts.
Property rights encourage investment in innovation and research.
In Portugal, protection for an invention (for example, through a patent), aesthetic creation (through a design or model) or sign (for example, through a trade mark) must be sought through the INPI.
Protection and registration are not compulsory. However, they are highly recommended given the advantages that they offer. Registration and protection by the INPI is only effective in Portugal. The registration application can be made on-line:
Applications made in this way benefit from a fee reduction of 50% for Patent Applications, 30% for Trade Mark and Design applications, and 10% for other forms of national registration. Alternatively, applications can be submitted in person to the INPI services or by post. They can also be submitted at Business Centres, at some Trade Registries and to the National Companies Register (RNPC). Applications made in this way, however, do not benefit from any fee reduction.
Before submitting an application, you must check what cannot be registered, so that you do not waste time and money on an application that will fail straightaway.
You should also try to find out what already exists and what is already protected. To do this, you can search the INPI database (free access), other databases, or other sources that contain relevant information.
Finally, in the case of patents, utility models, and designs or models, it is also important that you check whether what you want to protect or register has already been disclosed to the public in some form, which could prevent protection. This will only be the case if it has been disclosed under the terms and conditions laid down by law.
Having submitted your application, it undergoes a formal examination and is published on-line in the Industrial Property Bulletin. A period is then allowed for objections to be made by anyone who feels that they will suffer if the application is granted, at the end of which the application is examined in depth by the INPI (except in those cases where examination is not appropriate). A decision (fully or partly) granting or refusing the application will then be made.
If protection or registration is granted, this will only remain in force while the periodic fees are paid.
Certain rights have a limited duration, after which they enter the public domain:
- Patents: 20 years from the date of application;
- Utility models: 6 years from the date of application (which can be extended up to 10 years);
- Designs or models: 5 years from the date of application, which can be renewed for the same period up to a limit of 25 years;
- Trade marks and other distinguishing signs: 10 years from the date ofgranting, with this period being indefinitely renewable.
Rights can lapse not only due to failure to pay the periodic fees, but also for other reasons (for example, waiver by the holder).
On-the-Spot Trade Mark
In an effort to modernise the system, the ‘On-the-Spot Trade Mark’ service was created, which allows trade marks to be immediately registered. This service allows a trade mark and corresponding company name, or just a trade mark, to be adopted immediately, either on-line or at a one-stop shop, with absolute legal certainty.
In order to support this objective, the National Industrial Property Institute and the Registration and Notarisation Agency have endeavoured to make available a package consisting of previously approved trade marks and company names, which are currently available through the On-the-Spot Company website.
The ‘On-the-Spot Trade Mark Purchase’ service allows you to independently choose on-line, separate from the company formation, a company name available in the List of Company Names with Trade Marks. An access code is then provided so that you can view the status of the application.
The website of the National Industrial Property Institute (INPI) offers practical information on the protection and registration of industrial property rights and explains the benefits of industrial registration, how to register industrial property, and what to do if your rights are infringed.