Legal alert no. 78

Legal Alert no. 78 – Decree-Law no. 110/2018, December 10.

On December 10th Decree-Law no. 110/2018, approving the new Portuguese Industrial Property Code (hereinafter "PIPC") was published, at the Portuguese Official Gazette.

The Industrial Property Code Transfers into the internal legal system the Directives

i) Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015, to approximate the laws of the Member States relating to trademarks; and

ii) Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016, on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
Besides the approving of PIPC, this Decree-Law amended the Law of the Organization of the Judicial System, approved by Law no. 62/2013, of August 26th, and Law no. 62/2011, of December 12th, which had created mandatory arbitration for pharmaceutical patent disputes.

The Decree-Law no. 110/2018, has as its main aims:

a) continue with the overall strategy followed in Portugal of increased emphasis on the use of industrial property in our country for triggering innovation, products and services differentiation in the national and European market and economic growth;

b) simplifying and clarifying the administrative procedures related to the attribution, maintenance and termination of the industrial property rights laid down in PIPC;

c) increasing the efficiency of anti-crime measures in the area of  industrial property, in particular by means of additional penalties in respect of criminal and administrative offences and the uniformity of criminal justice;

d) reinforce cooperation mechanisms, convergence of practice and the development of common platforms between national trademark registration authorities and the European Union Institute for Property Registration; and

e) harmonize the rules of protection of know-how and confidential information in the Member States of the European Union, on the basis of the growing importance of a knowledge economy.

This Decree-Law, although similar in structure to the earlier code, features some new aspects as:

a) the possibility, in the course of opposition proceedings to a registration, to invoke the non-genuine use of a trade mark to prevent opposition to registration;

b) the possibility of a declaration of invalidity be decided by the INPI and cease to result only from a judicial decision, provided that the invocation does not result from a counterclaim (Article 34 PIPC); and

c) the introduction of a new provision on the ownership of inventions as a result of research activities carried out by employees or workers of a public legal person. Article 59 of the PIPC provides that the ownership of these inventions belongs to the public legal person. However, in any case, the inventor has the right to participate in the economic benefits received by the public legal person in the exploitation or assignment of the patent rights. Nevertheless, the public legal person may transmit the ownership of the inventions to the inventor reserving itself the right to hold a non-exclusive, non-transferable and free exploitation license.

This Decree-Law revokes Decree-Law no. 36/2003 of March 5th and approves a new Portuguese Industrial Property Code.

The provisions of the PIPC entry into force on July 1, 2019 with the exception of the provisions of the PIPC on the protection of trade secrets, which entered into force on January 1th, 2019.

To access the full version of Decree-Law no. 110/2018, dated from December 10th click here.

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