Portuguese patent law provides two ways for patent applicants to file a patent application, the provisional patent application (PPA) and the non-provisional patent application (PA).
1. Advantages of non-provisional application (PA)
The PA must be filed in Portuguese and must meet the formal requirements for a standard patent application, with a filing fee of 109.07 Euros. The Portuguese Patent Office (INPI) will issue a search report and a written opinion on the patentability of the patent within 10 months of filing the PA. The advantage of this is that if the patent application lacks novelty, the applicant can make corresponding amendments according to the search report and written opinions before formally submitting the patent application overseas.
2. Advantages of provisional application (PPA)
Provisional applications are useful for applicants who wish to secure a filing date for their invention as quickly as possible.
The PPA can be submitted in Portuguese or English. If the applicant intends to file an international patent application within 12 months from the date of filing the PPA, or within the same period, file a corresponding patent application in a country where English is the official language, such as the United States Patent and Trademark Office (USPTO) or the European Applicants can save on the cost of translation from Portuguese to English by filing an application at the Patent Office (EPO).
The official fee for filing a PPA is relatively low at only €65.45, and the PPA will be the first application to create a patent family, i.e. priority. In comparison, official fees for filing a first patent application at the European Patent Office usually start from €1,470.
It is worth mentioning that in order to file a PCT international patent application or to file a patent application directly at the EPO, there is no need to convert a PPA to a PA in Portugal. In other words, the PPA can be waived at any time, and if the PPA is filed in English, there is no need to spend money to translate it from English to Portuguese.
Another advantage of the PPA in Portugal is that the Claim do not even need to be included in the application file to INPI. In addition, color specification drawings or hand-drawn specification drawings can also be submitted.
After receiving the provisional application from the applicant, INPI will issue a search report within 10 months of receiving the provisional application. This search report is similar to the international search report for a PCT application, clearly listing prior art documents that may affect novelty/inventiveness.
3. Disadvantages and precautions of PPA
The provisional application PPA must convert the provisional application into a formal application PA within 12 months of submission.
According to the Portuguese patent law, when converting from a provisional application PPA to a formal application PA, it is not allowed to add a new subject (new matter).
When converting from PPA to PA, if the applicant adds a new topic, INPI will notify the applicant that it must be deleted, otherwise the transition from provisional application to formal application will not be possible. In addition, a Portuguese patent application cannot claim priority from other Portuguese patent applications, as stipulated in the Portuguese patent law. In other words, there is no concept of domestic priority in Portuguese patent law.
Therefore, applicants should include all complete information when filing a provisional PPA application. The addition of new subject matter is not allowed when converting from a PPA to a PA, which is considered to be a deficiency of the current Portuguese patent law.
INPI will review whether a new topic has been added when converting the PPA to PA, adding a new topic will give the new application a new filing date.
Such as: a pharmaceutical composition for treating a specific disease, wherein the composition includes a specific molecular active substance (API 1) as an active principle and a specific excipient (E), wherein the latter promotes the synthesis of API 1 in the organism Unexpected bioavailability in target tissues.
After filing the provisional application PPA, the inventors proceeded to conduct further experimental tests and concluded that the invention could work properly with another chemical substance (API 2) closely related to the API. Subsequently, when the provisional application was converted into a formal application, the inventor made the following Claim:
A pharmaceutical composition characterized by comprising API 1 and E.
A pharmaceutical composition is characterized by containing API 2 and E.
In this case, INPI will consider the subject matter of claim 2 to be related to a new subject matter and will notify the applicant to delete it from the Claim. The applicant must delete the newly added example to avoid being unable to convert into a formal application. In addition, the applicant must file a formal application involving the second embodiment.
This situation increases the applicant's costs when considering the cost of the formal application.
On the other hand, if the provisional application PPA has only the subject matter of claim 1, and the applicant files a PCT international application containing claim 1 and claim 2 within 12 months, the EPO as the ISRing Authority will search The fact that claim 2 is a new subject matter does not reject the PCT application.
Instead, the EPO will consider claim 2 to have a different priority date, the PCT international filing date, on which substantive examination will be conducted.
Subsequently, the PCT application can enter the Portuguese national phase, indicating that the national patent application will be granted if Claim 1 and 2 are considered novel and inventive.
Alternatively, the PCT application can enter the European phase, which then becomes effective in Portugal after the European patent is granted. Therefore, the prohibition of adding new subjects to the Portuguese provisional application PPA may lead to conflicting results for the applicant, considering that the prosecution only takes place in Portugal or abroad.
in conclusion
Whether it is a provisional application for PPA or a formal application for PA, the official fees for both are relatively low, and the search report and patentability report can be obtained within 12 months of the filing date. Filing a first application in Portugal is a very cost-effective option for applicants wishing to file a corresponding patent application abroad.
