• State of the art research
• Advanced technical research
• Opinion on validity of rights
• Opinion on the possibility of entry of a new product on the market (freedom-to-operate)
• Opinion on infringement of rights

RCF supports companies in planning internationalization, working and advising in close connection with the legal and marketing departments of our clients companies.

The existence of an Intellectual Property (IP) right, namely registered trademarks or designs or patents applied for or granted, does not necessarily imply freedom to enter the market nor that everything is guaranteed in what concerns IP rights.

Several actions must be carried out so that this internationalization does not suffer any problems or becomes impossible, avoiding financial losses in the short and medium terms and not directly related to the quality of the internationalized product or service.

This support provided by RCF allows that important and well-informed decisions are made, reducing the risk, when internationalizing products or services, caused by lack of knowledge or poor preparation in what concerns IP. This support will make it possible to define the types of rights to be obtained as well as which are the most appropriate means of protection, at an early stage of preparation.

Thus, RCF provides support at five levels:

Identification and analysis of existing IP rights in the target market

Adaptation to the new market, depending on the rights found and the possible collision of those rights with the products and services intended to internationalize

Protection of innovation at the target destination, after deciding on the appropriate ways to protect your IP rights.

Entry model and strategic partnerships, through the analysis of the form of internationalization, identification of the IP of the local partners and the best possibilities of taking advantage of the IP registered or granted in the meantime.

Surveillance of IP rights in these destinations, through our network of technological and local partners

Advice on the possibility of litigation for the imposition of rights, or in case of threats of litigation from third parties.

• Specialized assistance

A trademark is one of most valuable assets of a company. Therefore, before making any investment, it is important to carry out a priority search to find out the availability of registration of the desired trademark.

The RCF is qualified to carry out such trademark searches, including of figurative trademarks, using its own databases, as well as other external databases of recognised quality, thus guaranteeing a fast and reliable result.

These searches will compare the intended trademark with hundreds of thousands of trademarks in force in Portugal; thus, they cover not only Portuguese trademarks but also European Union trademarks and international trademarks, in addition to including an identity search with Logos, Domain Names and even Social Denominations (registered with the Portuguese Commercial Register Services).

The search results may be accompanied by a specialized opinion on the chances of success in obtaining the registration of the desired trademark, as well as practical suggestions to overcome any possible obstacles uncovered by the searches.

What are they?

Appellations of Origin and Geographical Indications are geographical names or corresponding to a defined geographical area, which are not only intended to make the origin or provenance of a product known to the consumer, but also to provide a guarantee that that product possesses certain specific characteristics or qualities resulting essentially or exclusively from its geographical environment.

While the Appellation of Origin requires the product to have a close connection with its region of origin, its specific qualities being due to natural conditions linked to the physical environment, the Geographical Indication does not require such a strong link to the natural environment, being sufficient that the reputation, qualities or characteristics of the product might be attributed to that geographical origin, having its production, processing or elaboration occurred there.

Rights

These rights confer upon its holder the right to prevent (art. 299 of the Industrial Property Code):

– The use by third parties, in the designation or presentation of a product, of any means that indicates or suggests that the product in question originates from a geographic region other than the true place of origin;

– Use that would constitute unfair competition;

– Use by persons not authorized by the registration holder. Application (Portuguese and International Registration)

Both the Portuguese and International trademark applications for registration are filed in an application form (art. 301 and 303 of the IPC) written in Portuguese, submitted to the Portuguese Institute of Industrial Property – INPI [Portuguese acronym], in which are indicated the name of natural or legal persons, public or private, with capacity to acquire the registration, the name of the product, or products, including the appellation of origin or the geographical indication and, finally, the traditional, or regulated conditions of the use of the appellation of origin, or of the geographical indication, and the boundaries of the respective place, region or territory.

Duration

Appellations of Origin and Geographical Indications have an unlimited period of protection.

Use

Appellations of Origin and Geographical Indications when registered are common property of the residents or those established in the place, region or territory, in an effective and serious manner and can be used indistinctly by those, within the respective area, who are engaged in any characteristic production branch, when authorised by the holder of the right.

What is a Design or a Model?

The scope of protection by Design or Model excludes the functional aspects of the product to be protected, confining itself to the characteristics associated with its appearance.

“A design or a model represents the appearance of a product, in whole or in part, resulting from the characteristics, in particular, of lines, contours, colors, forms, texture or materials of the product itself and its ornamentation”. (art. 173 of the Industrial Property Code).

The designs and models that are not entirely new but that result in new combinations of known elements or different dispositions of elements already used in order to confer to the respective products a unique character also enjoy legal protection (art. 175 (2) of the Industrial Property Code).

Rights
According to Article 197 of the Industrial Property Code, the rights conferred by registration
are:

“1. The registration of a design or a model confers on its holder the exclusive right to use it and to prohibit its use by third parties without his/her/its consent.
2. The use referred to in the preceding paragraph covers, in particular. the manufacture, supply, placing on the market, import, export or use of a product in which that design or model was incorporated or to which it was applied, as well as the storage of that product for the same purposes.”

Application and ways of registration
An application for protection of a design or a model may be filed to be covered nationally [Portugal], at European Community or Internationally.

An application for national [Portugal] protection is filed through a registration with thePortuguese Institute of Industrial Property [INPI – Portuguese acronym] and the protection provided by this registration is confined only to the Portuguese territory.

To apply for this level of protection, it is necessary to submit a duly filled application form together with the graphic representations of the design.

An application for protection in the European Union allows for an extended protection to all member states of the European Community through a single registration with the European Union Intellectual Property Institute (EUIPO).

To file this application, the documents required are essentially the same as those necessary for the national [Portugal] application.

An application for international protection makes it possible to extend the protection of a product to 74 contracting parties covering 91 countries through a single registration with the World Intellectual Property Organization (WIPO). The international registration produces the same effects in each of the designated countries, as if the design had been registered directly at the Offices of each of those countries, unless protection is refused by the national Office of the country concerned.

Maintenance of the Registration
The duration of national and European Union registrations is 5 years from the date of the application, and can be renewed, for equal periods, up to 25 years.

Maintenance fees are payable every 5 years (quinquennium), starting from the second five-year period, the first five-year period being included in the application fees.

The validity of an international design is five years from the date of application for registration, and may be renewed for additional periods of five years until the maximum period established by the legislation of each designated state is completed.

Concept

It is a set of legal rules that protect the creation of works, in the literary, scientific and artistic fields.

This creation requires an externalization, by any means, for it to materialize in reality.

Thus, creations that are only ideas, processes, systems, operational methods, concepts, principles or discoveries, that are not somehow implemented, are excluded from the scope of protection of this right.

What can be considered a Work?

The Code of Copyright and Related Rights, in article 2 no.1, sets out some examples of what can be considered a work:

– Books, pamphlets, magazines, newspapers and other writings;

– Lectures, lessons, addresses and sermons;

– Dramatic and dramatico-musical works and their production;

– Works of choreography and mime which are expressed in written or any other form;

– musical compositions, with or without words;

– cinematographic, television, phonographic, video and radiophonic works;

– works of drawing, tapestry, painting, sculpture, pottery, glazed tiles, engraving, lithography and architecture;

– photographic works and works produced by processes analogous to photography;

– works of applied art, industrial designs, and works of design that constitute artistic creations, whether or not protected as industrial property;

– illustrations and geographical maps;

– plans, sketches and plastic art works concerning architecture, town planning, geography or other sciences

– emblems or slogans, even if used for advertising, provided that they show originality;

– parodies and other literary or musical compositions, even if inspired by the theme or subject of another work.

 

Rights

The copyright owner of a protected work may use his/her work as he/she wishes and prevent any third party from using it without his/her permission. Thus, the rights over the exploitation and use of the work are exclusive.

 

Registration Process

The application for registration of a work shall be filed with IGAC – Inspeção-Geral das Atividades Culturais [IGAC – Portuguese acronym for General Inspection of Cultural Activities], by filling in a form that can be submitted online, in person or by post.

Documentation for an online application:

– Identification of the title of the work, representation or production subject to registration;

– Type of work, representation or production and with the specific description or identification data contained in the application for registration;

– Data of the applicant or of the original holder of the copyright;

– The work to be registered in a file not exceeding 7MB;

– Bank transfer proof.

Documentation for an application in person or by post:

– Filling out of an editable form or .pdf, with the elements mentioned above;

– Copy of the work to be registered, in physical or digital medium, with identification of the title of the work and the author;

– Payment or proof of payment.

After submitting the application for the purpose of registration of a work, the IGAC will issue its decision, of refusal or of acceptance, within 10 working days.

In the event of non-observance of any formality that does not allow the registration of the work, IGAC gives the applicant 30 days to correct his/her registration application.

Duration

The term of protection of copyright is 70 years from the end of the year of death of the respective author.

• Systematic survey
• Technical advice
• Rational management
• Portofolio optimization
• Rights evaluation
• Maintenance with the view to non-expiry
• Registrations, assignments and licences

Portuguese law provides guarantees and protection for industrial property as well as establishes the violations and means of defending copyright and related rights.

The following offences are foreseen in the field of industrial property:

Criminal:

1. Violation of the patent exclusivity, the utility model or the topography of semiconductor products.
2. Violation of exclusive rights to designs or models.
3. Counterfeiting, imitation and illegal use of a trademark.
4. Sale or concealment of products.
5. Violation of rights of name and insignia.
6. Violation of the exclusiveness of logotype.
7. Violation and illegal use of an appellation of origin or geographic indication.
8. Patents, utility models and registration of design or models obtained in bad faith.
9. Registration obtained or maintained by abuse of right.
10. Registration of a non-existent act or registration with concealment of the truth.

Administrative offences:

1. Unfair competition.
2. Violation of protected trade secret.
3. Invocation or illegal use of award.
4. Preparatory acts.
5. Use of unlawful trademarks.
6. Improper use of a name, insignia or logotype.
7. Invocation of improper use of private rights.

As regards violations of copyright and related rights,

1. Usurpation.
2. Counterfeiting.
3. Violation of moral rights and the.
4. Use of counterfeit or usurped works are also crimes provided for in our legal system, and there are also other administrative offences in the field of intellectual property.

We work daily to prevent and detect many of the problems mentioned above, in addition to assisting our clients in the repair in case of verification of illicit acts.

RCF – Protecting Innovation, S.A. participates in colloquia, seminars, congresses and other national and international events, which allows us to have a constant and updated information about this reality.

RCF provides technical support in all intellectual property matters concerning its clients, namely in the search for evidence of infringement and in contacts with offenders with a view to an amicable resolution of conflicts.

What are Trademarks and Logotypes

Trademarks are one of the most valuable assets of any company. Therefore, protecting it through registration is essential, whatever its commercial activity.

INPI – [Portuguese acronym for Portuguese Institute of Industrial Property] – and WIPO – World Intellectual Property Organization – define trademark as a “sign capable of distinguishing a company’s goods or services from those of other companies”.

On the other hand, the definition of the American Marketing Association, still adopted in classic marketing editions, adds details that materialize the legal definition: “A trademark is any name, word, sign, design or a combination of these elements with the aim to identify the goods and services of a seller, or a group of sellers, and to differentiate them from their competitors”.

By registering a trademark you are guaranteeing your right of ownership and the exclusive use of it for the goods and services for which it is intended.

In turn, the Logotype [or Logo] is an institutional signature, a sign used to identify and distinguish your company, as an entity that provides services or markets goods, from other companies.

As with the registration of a trademark, it is important to protect the sign and/or image of your company, by registering the symbol you use to identify it. While the registration of a trademark is intended to protect its goods or services, the figure of the Logotype aims to protect and distinguish its entity from the competitors, being a kind of “trademark” of your company.

Types of Trademarks

 

There are several types of trademarks according to their form of graphic representation (article 222 of the IPC – Industrial Property Code).

Trademarks must be represented in a way that, for all purposes inherent to the registration, allows their reproduction in a clear, precise, autonomous, easily accessible, intelligible, lasting and objective manner, allowing the competent authorities and the public to determine clearly and precisely the object of the protection provided to its holder.

Since the representation of a trademark defines the object of registration, whenever it is accompanied by a description, it must be in accordance with the representation and not go beyond its scope.

– Word/Verbal Trademark:  a sign that consists, exclusively or combined, of words, letters, numbers or other standard typographical characters and without any graphic representation, stylization or colour.

– Figurative Trademark:  a sign that consists of words, letters, numbers or other typographic characters, whenever they are stylized, in a non-standard format or have a graphic characteristic or colour, or of exclusively figurative elements.

– 3-D Shape Trademark: a sign that consists of, or integrates, a three-dimensional shape, including containers, packaging, the good itself or its appearance. Its representation, graphic or photographic, must include different angles, if this is essential for the perception of the three-dimensional element to be protected.

– Position Trademark: a sign that is characterized by the specific way in which it is placed or affixed to goods. The position trademark must be represented by a reproduction which correctly identifies the position of the sign and its size or proportion with regard to the goods concerned.

– Pattern Trademark: a sign that consists exclusively of a set of elements that are repeated regularly. The pattern trademark must be represented by a pattern that is repeated. The representation can be accompanied by a description that specifies the regularity of repetition of its elements.

– Colour Trademark:  Colour trademarks fall into one of the following definitions – 1) Sign consisting exclusively of a single colour, without contours; or 2) Sign composed exclusively of a combination of colours, without contours; 1) The trademark consisting of a single colour (without contours) must be represented by a reproduction of the colour and an indication of that colour by reference to a generally recognized colour code; or 2) The trademark consisting of a combination of colours (without contours) must be represented by a reproduction showing the systematic arrangement of the colour combination, in a uniform and predetermined manner, and by an indication of those colours by reference to a colour code generally recognized.

– Sound Trademark: a sign that consists exclusively of a sound or a combination of sounds. The sound trademark must be represented by an audio file that reproduces the sound or by an exact representation of the sound in musical notation.

– Motion Trademark: – a sign that consists of, or integrates, a movement or a change in the position of the elements that compose it. The motion trademark must be represented by a video or by a series of sequential still images that illustrate the movement or the change in position of the elements that constitute the sign.

– Multimedia Trademark: a sign that consists of, or integrates, a combination of image and sound. The multimedia trademark must be represented by an audiovisual file containing the combination of the image and the sound.

– Hologram Trademark: a sign that consists of elements with holographic characteristics; the hologram trademark must be represented by a video or a graphic or photographic reproduction containing the necessary and sufficient angles to identify the holographic effect in its entirety.

If not comprised by any of the types identified above, its representation must respect the established standards and be accompanied by a description.

and with regard to its characteristics:

Collective Trademarks: previously known as association trademarks, these are signs belonging to associations of natural or legal persons, whose members use them to distinguish their goods and services. The Collective Trademark confers upon the holder the right to discipline the marketing of the respective goods, under the conditions established by law, in the articles of association, or in the internal regulations.

Certification of Guarantee Trademark: previously known as certification trademarks, these are signs belonging to natural or legal persons who control the goods or services and establish standards that must be obeyed with regard to the material, way of manufacturing the goods or provision of services, quality, precision, among other standards, with the exception of the respective geographical origin.

A Logotype (or Logo), like a Trademark, can be word/verbal, figurative or mixed (verbal element plus figurative element).

Rights granted

The trademark registration confers upon its holder several rights, among which is particularly important the right to oppose the use or the registration of any identical or similar sign by third parties, when used to designate the same goods or services with clear affinity or complementarity to those identified by a registered trademark.

In the precise provisions of art.249 of the Industrial Property Code (Decree-Law nº 110/2018 of December 10) “The registration of a trademark confers upon its holder the right to prevent third parties, without his/her/its consent, from using, in economic activities, any sign which is the same or similar, in identical or similar goods or services to those for which the trademark was registered, and which, as a result of the similarity between the signs and the affinity among the goods or services, may give rise to a risk of confusion or association in the mind of the consumer”.

Application for registration (national [Portugal] route)

To apply for a trademark registration, it is necessary to submit a trademark registration application form (M1), provided by the INPI; a graphic representation of the trademark for publication, if the sign to be protected is not only verbal, as well as the payment of application fees.

When protection is applied for with the INPI, and when the registration is granted, it is only valid and effective in the national territory – Portugal.

After being filed with the INPI, the application is formally analyzed and prepared for publication in the Industrial Property Bulletin.

Once the trademark application is published in the Industrial Property Bulletin, a two-month period begins to elapse for the submission of oppositions by any person or entity deemed to be harmed by the eventual granting of registration. In turn, the applicant can contest the opposition within two months from the date of notification of the filing of the opposition.

If there is no opposition, or when the discussion is over, the trademark application is submitted for examination and is assessed for its distinctive and characteristic features to constitute a trademark (absolute criteria for registration) and for the existence of other priority rights of third parties (relative criteria) by the INPI, which will culminate in the issuance of a final granting decision or provisional refusal decision.

It is possible to reply to the provisional refusal, within a period of 1 month, which can be extended, by submitting a counter statement to the reasons for refusal stated in the examination content.

In a regular and unopposed case, the decision shall be delivered within 4 to 6 months from the date of the Industrial Property Bulletin in which the application was published.

The final decision of the INPI may be subjected to an administrative appeal with the INPI or to a legal action with the Intellectual Property Court.

 

Internationalization (European Union Unitary Trademark and International Trademark)

European Union Trademark:

This registration encompasses all member countries of the European Union in a single registration that is effective on the European market.

The trademark application is submitted to the European Union Intellectual Property Office (EUIPO) and after a formal and substantive examination, as to the absolute grounds for refusal, it is published.

Third parties may file an opposition within 3 months. In the absence of any opposition, the application is subject to registration without examination as to the relative grounds for refusal – existence of third party rights.

Upon opposition, the parties have time to reach an agreement that can settle the dispute. It is common, as a way for settling conflicts between holders, to conclude coexistence agreements that are usually based on the limitation of goods and services and on territorial limitation regarding the use of the trademark.

If the parties do not reach an agreement, the EUIPO Examiners proceed to examine the submission of opposition and then render a decision.

Once EUIPO decision is delivered, the parties may appeal superiorly to the existing Boards of Appeal.

If the opposition is considered admissible, it is possible, depending on the specific case, to convert the application into direct applications in the different countries where there are no impediments.

International Trademark:

For Applicants residing/domiciled/headquartered in Portugal, the process for an International Trademark Application must be based on a Portuguese trademark or an European Union trademark.

In any of the basic options it is possible, and within the period of 6 months, to claim the date of the first application, whether it was filed in Portugal or in the European Union.

In the International Trademark Registration it is also possible to designate the European Union bloc, which is a member state that has ratified the Madrid Protocol.

After the application for registration, the international trademark is analyzed internally in each of the designated Countries/Blocks within a maximum period of 18 months. During this period, official actions or oppositions may be filed by third parties to which a reply must be submitted under penalty of the international trademark not being approved in those specific jurisdictions.

International registration is advantageous since it allows several countries to be centralised in a single process, which is more beneficial and, at a future stage, it always allows extension to other countries that are part of the Madrid Agreement/Protocol.

The only drawback is the initial 5-year period dependency of the base registration. If the Portuguese or European Union trademark application/registration is refused or expires, this will be reflected in the international trademark.

Maintenance of the Trademark Registration

The registration of a Portuguese trademark is valid for 10 years, counting from the date of application for registration, and can be renewed indefinitely for equal periods.

Likewise, the European Union Trademark (valid in all Member States) or International Trademark registrations are also valid for 10 years from the date of the application for registration, with subsequent renewals for new periods of 10 years.

Maintenance of Logo Registration

The registration of a Logo is valid for 10 years, counting from the date of the application for registration, and can be renewed indefinitely for equal periods.

What is a Utility Model?
Utility Models are an alternative means of protection to patents, excluding inventions involving biological material and chemical or pharmaceutical compositions, substances or processes.

The IPC Art.119 provides:
“1 – New inventions involving inventing activity can be protected as utility models, if they have an industrial application.
2 – Utility models aim at protecting inventions by means of a simpler and speeder administrative procedure than that for patents.
3 – An invention that abides by the conditions established in paragraph 1 can be protected by a utility model or a patent, as the applicant chooses.
4 – The same invention may be the subject of a patent application and a utility model application.
5 – The successive submission of applications referred to in the previous paragraph may only be allowed within one year from the date of submission of the first application.
6 – In the cases set forth in paragraph 4, a utility model shall expire after grant of a patent for the same invention.”

Utility Model Granting Requirements

With regard to the granting requirements, an invention is liable to be protected by a utility model if it is new, involves an inventive step and has industrial applicability, as is also the case for patents.

However, in what concerns the requirement of the inventive step, the utility model is less demanding than the patent, since to fulfil this requirement it is sufficient condition that the invention presents a practical or technical advantage for the manufacture or use of the product or the process in question.

The utility model can be subject to internationalization, as can the patent. It should be noted, however, that not all jurisdictions have this legal figure, so the scope of international protection conferred by the utility model is more limited than that of patents.

Considering the particularities and limitations of the utility model regarding the patent, the option of protection by this means should be carefully studied with our experts, taking into account the potential for patentability of the invention in question.

Rights

The utility model confers on the holder the exclusive right to exploit the invention in any part of Portuguese territory. If the object of the utility model is a product, it confers on its holder the right to prohibit third parties, without his/her/it consent, from manufacturing, using, offering for sale, selling or importing the product for these purposes. If the object of the utility model is a process, it confers on its holder the right to prohibit third parties, without his/her/its consent, from using the process, as well as from using or offering for sale, sale or import for these purposes, the product obtained directly by this process.

Application

For a utility model, the following is necessary:

● Patent or utility model application form;
● Claims of what is considered new and characterizes the invention;
● A description of the object of the invention;
● Drawings necessary for a perfect understanding of the description;
● Summary of the invention;
● Representation for publication;
● Payment of Application fees.

INPI promotes the examination of the invention, taking into consideration all the elements contained in the process (article 132 of the IPC).

Maintenance of a Utility Model

The duration of a utility model is 6 years from the date of submission of the application, extendable for two more periods of 2 years, for a total of 10 years.

Annuities are due from the third year from the date of the application, under penalty of forfeiture of the right.

RCF is specialized in the registration, management and maintenance of Domains, ensuring its clients the necessary support at any stage, pre and post registration, of the Domain.

What is a patent?

A patent is an industrial property right that corresponds to a contract between the State and the patent holder. This contract provides that the State gives the holder the right to prevent third parties from manufacturing, offering, storing, placing on the market or using a product covered by a patent or importing or possessing it for some of the purposes mentioned. In the case of a process, the patent gives its holder the right to prevent third parties from using the process covered by the patent or, if the third party is aware or should be aware that the use of the process is prohibited without the consent of the patentee, the offer of its use, as well as the offer, storage, placing on the market and the use, or import or possession for these purposes, of products obtained directly by the process object of the patent.

According to the Portuguese Industrial Property Code (art. 50 of the I.P.C.):

“1. New inventions may be the subject of a patent, involving inventive activity, if they are susceptible to industrial application, even when they concern a product composed of biological material or which contains biological material, or a process that allows the production, treatment or use of biological material.

2. Patents can be obtained for any inventions, whether they are products or processes, in all fields of technology, provided that these inventions respect the provisions of the previous paragraph.

3. New processes for obtaining products, substances or compositions already known may also be the subject of a patent. ”

Patentability Requirements

To obtain the grant of a patent, the invention must respect well-defined patentability requirements – novelty, inventive activity and industrial application – as reproduced below in accordance with art. 54 of the IPC:

“1. An invention is considered new if it does not form part of the state of art.

2. An invention shall be considered as involving inventive activity if, having regard to the state of the art, it is not obvious to a person skilled in the art.

3. (…)

4. An invention is considered susceptible of industrial application if it can be made or used in any kind of industry or in agriculture.”

State of the art means everything that has been made public, within the country and abroad, by any means, on a date prior to the date of the patent application (art. 55º I.P.C)

Patent Application (National [Portugal] Route)

To apply for a patent, it is necessary to submit an application written in Portuguese containing, inter alia, a document describing the object of the application in order to allow the execution of the invention by an expert in the field. Such a document must include a description of the object of the invention, claims of what is considered new and which characterizes the invention, drawings necessary for a perfect understanding of the description and a summary of the invention.

The extent of the protection conferred by a patent is determined by the final text of the claims and the description and drawings shall serve to interpret them (art. 98 of I.P.C.)

Thus, the extent of the protection conferred is determined by the contents submitted in the application and not by the invention itself.

The preparation of the contents of a patent application is carried out at the initial stage of the protection process. The inventors are indispensable with regard to the technical contribution to the text contents, since they are the ones who best know the invention and, in most cases, they are also experts in the technical area in which the invention is positioned and applied.

However, the demanding technical and legal requirements of a patent application text contents (indispensable either at the application stage or after a possible grant) strongly advise the involvement of a patent specialist in its preparation.

Patent specialists desirably have basic technical training and specific complementary training in the field of writing patent texts.

These professionals, in addition to drafting the application contents, also act as experts in patent litigation actions, producing opinions on the patentability of inventions, on possible product infringements to existing patents, as well as opinions on the validity of granted patents.

In Portugal, the official recognition of the skills of these professionals is conferred by the Portuguese Institute of Industrial Property (INPI), through the attribution of the status of “Official Industrial Property Agent” (AOPI – Portuguese acronym for OIPA).

RCF integrates in its staff several patent specialists covering all technical areas, as well as Official Industrial Property Agents, offering highly specialized support, both in terms of patents and other forms of protection contemplated in the Law.

When a priority date is to be secured and not all the elements for filing a patent application are yet available, a provisional patent application (PPP – Portuguese acronym for PPA) can be filed. This application must describe the invention in such a way as to enable it to be carried out by a person competent in the matter and must be converted into a definitive patent application before the expiry of a period of 12 months from the date of its filing with the INPI.

Before being granted, the patent application is subjected to research and subsequent examination to assess the three requirements for patentability: novelty, inventive step and industrial applicability. The INPI also checks whether the application for registration has sufficient description contents to allow its practical implementation by a person skilled in the art.

One of the most common and harmful errors for a possible granting is the disclosure of the invention by the inventor(s)/applicant(s) before the patent application is filed. This prior disclosure compromises the requirement of novelty and, thus, the possibilities of the patent being granted. Examples of these types of disclosures are poster presentation and oral communications at congresses or a preview of the product on the applicant’s website, just to name the most common cases.

Sometimes, these prior disclosures are not detected in the research carried out by the competent authority and, therefore, in these circumstances, they do not preclude the granting of the patent. However, a patent obtained under these conditions constitutes a “weak” Right, since it can be easily annulled in Court by any interested third party who proves that there was a disclosure prior to the date of the respective application.

In order to guarantee effective protection, a “Golden Rule” should be adopted, which consists of not disclosing the invention, by any means, before filing a respective patent application.

If you have an innovative idea for which you want legal protection, you will be able, through our services, to benefit from professional advice on the most suitable ways and means of protection for your idea as well as a personalized monitoring of the entire administrative process, from the drafting stage of the application, carried out by our professionals, until the granting. In addition, you may still resort to our legal support in case of a dispute or other applicable situations.

European and International Routes

● European route
According to Art.78 of the I.P.C., European patent applications are submitted to the Portuguese Industrial Property Institute or to the European Patent Office.

The European Patent Convention currently has 38 member states, 2 extension states and 4 validation states.

Once the European patent is granted, it must be validated in each of the countries in which protection is sought, thus extending the rights granted by the European patent to the jurisdictions of interest.

● International Route (Patent Cooperation Treaty)

In accordance with art.92 of the I.P.C.:

“1. International applications filed by natural or legal persons who have their domicile or head office in Portugal must be submitted to the Portuguese Institute of Industrial Property, to the European Patent Institute or to the World Intellectual Property Organization.

2. Whenever priority of a previous application filed in Portugal is not claimed, the international application must be submitted to the Portuguese Institute of Industrial Property, under penalty of not producing effect in Portugal.” The number of member states of the World Intellectual Property Organization is currently 193 acceding countries. Of these, 153 have signed the PCT Treaty (Patent Cooperation Treaty).

The international application is filed in a single language and provides a single publication.

During the international phase, the applicant also has access to a research report and a written opinion, carried out by the International Research Authority, which produces an analysis regarding the fulfilment of the patentability requirements related to his invention.

The applicant may, within 30 months from the date of the PCT application or from the date of the oldest priority application (if any), request entry to the national and/or regional stages where he/she/it wishes to obtain protection for his/her/its invention. Subsequently, each of the national or regional Institutes will evaluate the application in accordance with its national law, being the final decision of the responsibility of that state. This means that a same invention may be refused in some jurisdictions and granted in others.

Patent Maintenance

In Portugal and in most jurisdictions, the duration of a patent is 20 years from the date of the respective application (article 100 of IPC). In most cases, annuities are due from the third year from the date of submission of the application, as in Portugal. However, in some countries, annuities are due from the first year after the filing date while in other countries annuities are only due after the patent is granted.

The bet on innovation (development of new or improved goods or services) is nowadays a reality that extends to an increasing number of companies, as increases the awareness of its importance as a determining factor to maintain or enhance competitiveness in the markets.

Innovation and, consequently, the development of new products is already a reality.

Creations of Portuguese researchers in various technological areas are published every day, being the most newsworthy and, hence, with greater dissemination by the media, those that focus on biotechnology, medicine, electronics, software and also the creations that are distinguished mainly by innovation in the design.

Alongside innovation, Technological Poles, Incubators, Clusters are increasingly emerging, all of them regardless of name, with the common purpose of creating appropriate conditions for Research and Development and for the financing of Entrepreneurs, to foster the development of partnerships and innovative projects, both nationally and internationally. In practice, in addition to sharing knowledge, specialization and economies of scale, all these synergies provide added value, develop exports, improve Portugal’s image, attract foreign investment and create jobs.

In order to safeguard knowledge and ensure that this innovation is not unduly exploited by those who had knowledge of it but did not contribute to obtain it, it is extremely important to use both national and international means to protect Industrial/ Intellectual Property. Depending on a careful selection on a case-by-case basis, this protection can be achieved by obtaining patents and utility models and by filing registrations of designs or models, trademarks, logotypes, and also by depositing creations for the purposes of recognition of Copyright, among others.

Patents, Utility Models and Designs or Models create value in many ways, namely freedom to act, protecting goods differentiation, ensuring return on investment, providing credibility to its holders, ensuring legal support for technological licensing.

There are more and more frequent cases in which, despite the success of the innovation, the interest in that innovation, by the financiers or large companies interested in obtaining licenses for its exploitation or acquiring industrial property rights (Patents, Models of Utility, Designs or Models) disappears when evaluating the protection obtained and, thus, the exclusive for commercialization. Financiers or interested companies will check whether these rights are granted, whether they are in the process of being granted, what the scope of protection is or, on the other hand, whether they are merely non-granted applications.

On the other hand, trademarks allow the identification of goods and services of a company, distinguishing them from other goods or services of other companies. Its registration confers upon its holder an exclusive use and the right to prevent third parties from using a same or similar sign in identical or similar goods or services.

Therefore, it is highly advisable, before identifying your goods or services with a trademark, to check the availability of registration of the trademark, that is to say, check if there are no other registered trademarks identical or similar to the trademark you intend to use, for the goods or services that you will commercialize under that trademark. After ensuring the availability of registration, you have to file the registration of the trademark in order to obtain the referred exclusive.

The logotype (or logo) is a sign designed to identify an entity that provides services or commercialize goods, distinguishing it from others. The logo is intended to be used to identify establishments in advertisements, in printed matter or used in the correspondence of that company.

RCF provides its clients with specialized services in the field of intellectual property, among which the following are pointed out:

● Research in specialized databases of industrial property and others of a generic nature, for preliminary assessment of the patentability of an invention;

● Advice on the choice of the appropriate means of protection of the invention (Portuguese, European or international);

● Drafting the text for a patent application;

● Monitoring and management of the entire administrative process, from the application to the granting, of patent and utility models applications, reply to notifications from the intervening official entities and control of procedural deadlines;

● Maintenance of rights, by paying the official fees due in the countries where the right is to be obtained and kept valid;

● Surveillance of rights and of applications related to the areas of intervention of our clients;

● Technical analysis to assess the possibility of entry of a new product on the market (freedom to operate);

● Validity analyzes of industrial property rights;

● Analyses of Infringement of products and/or manufacturing processes;

● Verification of the availability for registration of trademarks and logos (priority searches);

● Advice and support throughout the process of registration of a trademark, logo, and design or model;

● Support in the registration of the appellation of origin or geographical indication;

● Support in the deposit of intellectual creations from the literary, scientific, and artistic fields, by any means, externalized, being included in this protection the rights of the respective authors – Copyright;

● Specialized legal support in litigation of intellectual property rights.

What are they?

Reward can be a word, figurative or emblematic sign, granted as a reward, demonstration of praise or preference to industrialists, traders, farmers and other entrepreneurs, for the excellence of their goods.

The following are considered Rewards (art. 270 of the Industrial Property Code):

– Accolades of merit awarded by the Portuguese State or by foreign states;

– Medals, diplomas and pecuniary or any other prizes obtained at official or officially recognized exhibitions, fairs and competitions held in Portugal or in foreign countries;

– Diplomas and certifications of analysis, or praise, issued by laboratories or services of State or by organizations qualified for that purpose;

– Warrants of purveyor to the Head of State, the government or other official entities or establishments, both national and foreign;

–  Any other accolades or demonstrations of preference of an official nature.

 

Rights

The registration of the rewards guarantees the veracity and authenticity of the titles, of its granting, and ensures the holders their exclusive use, for an indefinite time.

Application

According to article 273 of the I.P.C., the application for registration of rewards is made in an application form, written in Portuguese, where it is indicated:

1. a) The applicant’s name, the firm or the corporate name, nationality and address or place of business;

1. b) The awards for which registration is being applied for and the entities that granted them and respective dates;

1. c) The goods or services distinguished with the awards;

1. d) The name of the establishment to which the reward is linked, either in whole or in part, when applicable.

The application must also be accompanied by the originals or certified copies of the diplomas, or other documents proving the granting of the reward. Proof of receipt of a reward can also be provided by attaching a duly legalized copy of the official publication in which the reward has been granted or published, or just the part of that publication that is necessary and suffices to identify it. (article 274 of the I.P.C.).

The use of a Reward registered by a third party without the consent of its Holder is punished with a fine. The fine amounts are established between €3,000 and €30,000 for legal persons and €750 and €7500 for natural persons (article 332 of the CPI).

Quality, compliance with deadlines and confidentiality are the principles that guide all our translation activity.

What are they?

Plant varieties are a type of industrial property that is responsible for protecting inventions applied to a plant environment.

Requirements

According to Regulation (EC) No. 2100/94, the plant variety must be:

1. Distinct.

2. Homogeneous .

3. Stable.

4. New.

Rights

Protecting plant varieties confers on those who have created or developed them an exclusive period of manufacture, reproduction, sale or use.

Once protection is granted, the creator rights holder has the right to prevent the following acts without his/her authorization:

1. Production or reproduction (multiplication);

2. Conditioning for propagation purposes;

3. Sale or other type of commercialization;

4. Export / Import;

5. Storage for any of the above mentioned purposes.

Process

To apply for the registration of a plant variety, it is necessary firstly to submit an application for registration in the National Catalogue of Varieties (NCV).

Then, the testing phase follows, namely of distinction, homogeneity and stability (DHS), of analyzes and/or tests according to the applicable examination protocol. The DGAV / Direção de Serviços de Sanidade Vegetal [Directorate for Phytosanitation] accompanies the test for its own evaluation.

Once the test is concluded, the applicant must submit to the DGAV/DSSV, by letter or email, the necessary documentation.

DGAV then evaluates the documentation sent and decides whether or not to register the variety in the NCV, bearing in mind the principles of distinction, homogeneity and stability applicable to each plant species, the existence of selection to maintain the variety and the community rules applicable to the denominations of the plant varieties.

The decision is taken no later than January 31 of the year following the submission of the complete final file.

Maintenance

Community plant variety protection law is effective until the end of the 25th calendar year or, in the case of vine varieties and tree species, of the 30th calendar year following the year of its granting.

Once the right of the holder has expired, the plant variety becomes public domain.

At national level [Portugal], the entity responsible for granting protection is the Direção Geral da Agricultura [General Directorate of Agriculture] (Dec. Law 213/90 of June 28).

The great technological development that we are witnessing today has generated countless new opportunities, but also new dangers.

The internet and the exponential increase in domain names, the countless new applications, digital media and social networks are examples of the rapid spread of information generating huge business opportunities. They are also threats to the image of companies and their trademarks as they increase the risk of improper use by third parties that may lead to a risk of confusion and damage to the reputation of a trademark or a company.

Being aware of these digital media is currently a necessity that should not be overlooked.

RCF provides its clients with technological surveillance services designed to monitor and detect threats to their Industrial Property rights as quickly as possible, whether they are:

• trademark applications in the relevant jurisdictions;
• domain names applications,
• mobile application names,
• user names, disparaging comments or improper use of a trademark in social networks