Patents

What is a patent?

A patent is an intellectual property right that corresponds to a ‘’contract’’ between the State and the holder of such patent. This contract lays down that the State gives the holder the right to hinder third parties from manufacturing, offering, storing, introducing in the market or utilizing a product off-patent or, in the case of a process, of a product obtained by the same process. It also prevents the import or possession of such product for any of the above purposes. In exchange, the patent’s holder advertises its creation and the best way to use it. The publication of the patent request happens 18 months after the filing of the first patent application.

According to the Portuguese Intellectual Property Code (art. 51st of the C.P.I.):

‘’1. There may be object of patents new inventions, involving inventive activity, if they are susceptible to industrial application, even if  they address a product composed by biological matter, or which contains biological matter, or a process that allows to produce, treat or utilize biological matter.

2. It is possible to attain patents for any inventions, whether they are products or processes, in every domain of technology, provided that those inventions respect what is established in the preceding paragraph.

3. There may also be object of patents new processes to obtain products, substances or compositions already known.’’

The administrative act of a patent request does not concede the above mentioned rights immediately.

Patentability Requirements

To obtain the concession of a patent the invention should conform to well defined requirements – novelty, inventive activity and industrial applicability – as reproduced below:

‘’1. An invention is considered new when it is not comprised in the technique status.

2. It is considered that an invention implies inventive activity if, for an expert in such specialty, it doesn’t result in an obvious way from the state of the art.

3. It is considered that an invention is capable of industrial application if its object can be manufactured or utilized in any kind of industry or in agriculture.’’ (Art. 55th C.P.I.)

‘’State of the Art’’/Technique Status’’ refer to everything made public, in and outside the country, by any means, at a date earlier than the patent request.

Patent Request (National Application)

To request the publication of a patent it is necessary to word a patent request pursuant to the Art. 61st of the C.P.I.. It can be elaborated by anyone, however the scope of protection granted by a patent is determined by the claims’ final text, being the description and designs (if any) utilized to interpret them.

This way, the scope of protection granted is determined by the text related to the application and not by the invention itself.

The preparation of a patent request text is carried out in the initial phase of the protection process. The inventors are indispensable for the technical aspects of the text since they know their inventions better than anyone and, in most cases, are also experts in the technical field in which the invention is applied.

However, given the stringent technical and legal requirements of such text (indispensable not only at the request stage but also after a possible granting) the participation of a patent expert is strongly recommended during its elaboration.

Patent experts have, desirably, technical training and further specific training in the field of patent texts.

These professionals, apart from wording request texts, also intervene as experts in patent litigations and produce opinions regarding patentability for inventions, potential offences of a product to a patent in force and validity of conceded patents.

In Portugal, the official recognition of the competences of these professionals is granted by the National Industrial Property Institute (INPI), through the attribution of the ‘’Industrial Property Official Agent’’ title.

RCF has, in its team, multiple patent experts which cover all technical areas, as well as Industrial Property Official Agents, offering a highly specialized support for all the protection means covered by the law.

When it is intended to ensure a priority date but not all the required elements for a patent request are yet available, it is possible to file a provisional patent application (PPP). This application shall describe object of the request in order to allow for the execution of the invention by a competent person in the field and it will have to be converted into a definitive patent request before a deadline of 12 months expires, starting from the date of filing of the provisional one.

In order to be granted, the patent request is subject to a research and exam, to assess the 3 requirements for patentability: novelty, inventive activity and industrial applicability. The competent authority also verifies if the request contains a sufficient description in order to allow for the practical implementation by a specialist in such technique.

One of the most common and harmful errors for an eventual concession of rights consists in the disclosure of the invention by the inventors themselves in a period prior to the patent request. This prior disclosure compromises the requirement of novelty and consequently the possibilities of concession of the patent. Examples of prior disclosure are poster presentations and oral communication in congresses or a preview of the product on the applicant’s website.

Sometimes, these prior disclosures are not detected on the research done by the competent authorities, wherefore, in these circumstances, they don’t invalidate the concession of a patent. However, a patent obtained in these conditions constitutes a ‘’weak’’ right, since it can easily be nullified in Court by any third party who adduce evidence of the existence of the disclosure prior to the date of the respective request.

In order to guarantee an effective protection, a ‘’golden rule’’ must be adopted which consists of not disclosure by any means the invention before the respective patent request.

Anyone can word and present a patent request. None the less, the scope of protection granted by a patent is determined by the claims’ final text, being the description and designs (if any) utilized to interpret them. This way, the scope of protection granted is determined by the text related to the application and not by the invention itself.

If you have an innovative idea for which you seek legal protection, you will benefit, through our services, from professional support related to the adequate protection for your idea and personalized follow-up throughout the entire process, from the wording of the request, done by experienced professionals who are specially trained to deal with the specificities of the national and European patents, to the concession of the rights and subsequent vigilance, being able to also contract our legal services in any case of dispute or other applicable situations.

European and International Applications

  • European Application

Pursuant to article 76th of the C.P.I., European patent requests are submitted to INPI or to the European Patent Institute.

The European Patent Convention includes 38 member states with 4 more non members of possible expansion.

Once the European patent is granted, it shall be validated in each of the countries in which, as designated in the request, the rights vested by the concession of the European patent are intended. It is possible to validate the rights in a lower number of countries than designated in the request.

  • International Application (Cooperation Treaty with Regard to Patents)

Pursuant to article 91st of the C.P.I.:

‘’1. The international requests filed by singular or legal persons who are domiciled in Portugal shall be presented at the National Industrial Property Institute, the European Patent Institute or at the World Intellectual Property Organization.

2. Every time priority over a previous request made in Portugal is not claimed, the international application shall be presented at the National Industrial Property Institute, under penalty of not producing effect in Portugal.’’

The number of member states of the World Intellectual Property Organization is, currently, 185. 151 of these signed the PCT Treaty (Cooperation Treaty with regard to patents).

The international request allows the client to file one single application valid for various countries, in a single language and with a single publication. Still during the international stage, the applicant is granted access to a search report and a written opinion carried out by the World Intellectual Property Organization, which analysis the patentability requirements related to its invention and publishes the request.

Upon publication, all documentation is sent to the national or regional institutes which assess the application pursuant to each state’s laws, being the final dispatch responsibility of each state. This means the same invention can be refused or approved in different states in the various countries.

Patent Maintenance

A patent is valid for a term of 20 years after the date of the respective request (art. 99th of the C.P.I.). In most cases annuities are due starting from the third year following the request, as in Portugal. In some countries, annuities are due from the first year following the request and in others they are due only upon the granting of the patent.