Portuguese Patent Application Q&A

1. Can a Portuguese patent cover any type of invention, including software, business methods and medical procedures?

• Patents can be granted for any type of invention in any field of technology, whether it is a product or a process, or for a new process for obtaining an already existing product, substance or compound. According to the IPC, the following are not patentable:
  • Computer programs and software without technical contribution;
  • business plans, rules or methods;
  • methods of engaging in purely mental activities or playing games;
  • Methods of treating humans or animals by surgery or therapy, and diagnostic methods.

Who owns a patent for an invention of a company employee, independent contractor, multiple inventors or a joint venture in Portugal? How is patent ownership formally recorded and transferred?

• The general rule is that the inventor and his legal heirs own the patent rights to the invention.
• If the invention is made by an employee of the company or an independent contractor and the invention activity is stipulated in the employment contract or the agreement for the provision of services, respectively, the patent right belongs to the company.
• If the invention is made by multiple inventors or a joint venture, any one inventor can apply for a patent on behalf of all inventors.
• Patent ownership is officially recorded at the Portuguese Industrial Property Institute (INPI), which represents the legal conditions for patent protection and granting exclusive rights to inventions. Transfers of patent ownership must be made in writing and recorded at the INPI and published in the Industrial Property Gazette in order to be effective for use by third parties.

How long does it usually take to obtain a Portuguese patent application and how much does it usually cost?

• Generally speaking, the average time for a Portuguese patent application to be granted is 2-3 years from the time the new application is filed.
• The official INPI fees range from €150 to €400.

4. Is there any accelerated procedure for patent applications in Portugal?

• A request for accelerated examination may be made under the Patent Prosecution Highway (PPH) pilot program.

5. What contents of the invention must be disclosed or described in a patent application? What principles should be followed when writing a patent application specification?

A Portuguese patent application must contain the following elements:

• Invention Name
• The claims must define what is new, what is inventive, and the scope of protection required in a clear, concise and correct written manner based on the description, and further include:
  • An introduction setting out the subject matter of the invention and the technical features necessary to identify the elements of the claims, but which in combination form part of the state of the art;
  • The description of the technical features connected with the features mentioned in the previous point shall be preceded by the words “characterized by…” to determine the scope of protection claimed;
  • a description of the invention, i.e. a clear description of all that constitutes the invention without reservation or omission, together with a detailed description of at least one embodiment enabling a skilled person to carry out the invention;
  • Required drawings and their descriptions;
  • The abstract of the invention, to be published in the Industrial Property Gazette, shall include a brief summary of the specification, claims and drawings, preferably not exceeding 150 words.

6. Must the inventor disclose the prior art to the patent office examiner?

• unnecessary.

VII. Can a patent applicant file one or more subsequent applications to pursue additional claims to inventions disclosed in its previously filed applications? If so, what are the applicable requirements or limitations?

• If the initial application does not meet the requirements of unity of invention, a divisional application may be filed, as long as the scope of protection of the divisional application does not exceed the scope of protection of the parent application.

8. Can I appeal to the court against an adverse decision of the Patent Office?

• Yes, INPI grant or refusal decisions, as well as all other decisions concerning assignment, licensing, expiry or any other matter affecting, varying or revoking an IP right, are subject to judicial appeal before the IP Court.

9. Does the Patent Office provide a mechanism for opposing the granting of patents?

• Oppositions and third-party observations may be filed during the patent application process and within two months (extendable) after the patent application is published in the Industrial Property Bulletin.
• After a patent is granted, in addition to filing a judicial appeal with the Intellectual Property Court, you can also apply to the superior member of the INPI to modify the decision issued by the INPI.

10. Does the Patent Office provide any mechanism to resolve priority disputes between different applicants for the same invention? What factors determine who has priority?

• The INPI does not provide any resolution mechanism to resolve priority disputes.

11. Does the Patent Office provide for procedures for amending, reviewing, or revoking a patent? Can the patent claims be amended during court proceedings?

• Patent amendments cannot affect the substantive content and essential features of the patent. Proactive amendment applications cannot be opposed, but any third party who may be "directly and effectively affected" by the patent office's decision can appeal the decision.
• A patent can be restricted either administratively before the INPI or judicially before the Intellectual Property Court (amended claims may not extend the protection of a granted patent).
• The IPC does not specify the requirements for substantive examination. The INPI will evaluate and decide whether the amended claims reduce the scope of protection of the granted patent, as well as whether the amended claims are clear, supported by the description, and whether they add additional content beyond the initially filed application. The IPC also does not specify a deadline for third parties to oppose time-barring applications, however, any third party who may be "directly and effectively affected" by the decision may appeal the decision within two months of its publication. If the amendment is not approved, the INPI will only notify the applicant of the decision. The patent owner may appeal to the Intellectual Property Court within two months from the date of receipt of the notification of the decision to reject the limitation.
• Although patent owners have the right to limit their claims before the IP Courts, this is not common in Portugal.
• The jurisdiction to revoke a patent belongs solely to the Intellectual Property Court.