During the pandemic, the importance of an Intellectual Property system that protects and values inventions—and all the work behind them—became clear. Within just a few months, vaccines were developed, made possible in part by a patent system that promotes and rewards innovation.
This topic sparked extensive debate, numerous arguments, and some political positioning. However, with more than 85% of the Portuguese population having access to vaccines, the importance of the patent system, as it currently exists, was clearly demonstrated.
This is a fundamental duty of anyone entrusted with managing Intellectual Property rights. No matter how simple the task may seem, a dedicated professional will always approach the protection of this category of economic rights as a strategic step toward enhancing and safeguarding the asset in question—from the moment the application is filed and throughout the entire lifecycle of the right.
Exercising diligence in the protection of Intellectual Property, by consistently ensuring that financial, time, and resource investments are strategic and value-generating, is essential for companies that seek to base their growth on differentiation and innovation.
Counterfeiting—the manufacture and distribution of “fake” products—is one of the greatest threats facing right holders and the economy. It is now a global phenomenon, in some cases linked to organized crime and even terrorism.
According to recent studies promoted by European organizations, counterfeiting results in an estimated €15 billion in lost public revenue annually within the European Union. It has also been found that 97% of detected counterfeit products pose serious risks to consumers.
In four selected sectors—cosmetics, pharmaceuticals, wines and spirits, and toys and games—counterfeiting was estimated to cause losses of €19 billion across the EU. In Portugal alone, these losses were estimated at €331 million.
Counterfeiting represents a significant destruction of value for businesses and public finances, poses a threat to employment, and acts as a major barrier to innovation and investment.
Geographical Indications are an increasingly important topic in the field of Industrial Property, gaining growing economic relevance and attracting significant international attention, particularly regarding mechanisms to strengthen their protection.
A Geographical Indication (GI) is the name of a region, a specific place, or, in exceptional cases, a country, used to designate or identify a product that:
a) originates from that region, place, or country; and
b) whose reputation, given quality, or other characteristic is essentially attributable to that geographical origin, with at least one of the stages of production, processing, or preparation taking place within the defined geographical area.
Examples include Alheira de Mirandela and Salpicão de Vinhais.
The Hague Agreement Concerning the International Registration of Industrial Designs provides a mechanism for the acquisition, maintenance, and management of design rights across countries and intergovernmental organizations that are members of the Hague Union, through a single international procedure.
An application filed with the World Intellectual Property Organization (WIPO) results in a single international registration, which produces individual effects in each of the designated Contracting Parties (States or intergovernmental organizations).
Portugal is not a member of this Agreement.
Industrial Property Agents are specialists in the field of Intellectual Property. The title of Industrial Property Agent (AOPI) is granted by the Instituto Nacional da Propriedade Industrial (INPI) following approval in an examination organized by the Institute.
As professional representatives officially recognized by the INPI, AOPIs are entitled to act before the Institute without the need to submit a power of attorney.
In proceedings relating to the protection of Industrial Property—whether trademarks, patents, or other protectable subject matter—parties should be assisted by an AOPI, who ensures the necessary expertise and legal certainty for the proper handling of such matters.
At JEDC, we have a team of experienced AOPIs ready to advise our clients on all aspects of Industrial Property.
In the vast majority of European Union countries, matters relating to Industrial Property are, at governmental level, overseen by the Ministry of Economy or equivalent bodies. This was also the case in Portugal until 2006. Since then, the Instituto Nacional da Propriedade Industrial (INPI) has been placed under the supervision of the Ministry of Justice.
Regardless of the merits of this approach, it is essential that, in the development and implementation of public policies in the field of Industrial Property, careful attention is given to the inherently economic nature of these rights. In many cases, Industrial Property rights represent a company’s main economic asset.
The proper legal framework and economic valuation of these rights are therefore crucial to the success of public policies in this area.
It is one of the most widely used Industrial Property rights by Portuguese companies and represents a distinctive feature of the Portuguese legal system.
A logotype may consist of a sign or a combination of signs capable of graphic representation. It must be suitable to distinguish an entity that provides services or markets products, and may be used in establishments, advertisements, printed materials, or correspondence.
It is often confused with trademarks (figurative or combined marks), but it is, in fact, an autonomous right, distinct from trademarks.
. What it is: Following the publication of the application in the Industrial Property Bulletin (BPI), any party who considers that they may be adversely affected may file an opposition against the registration.
. Deadlines: The deadline to file an opposition is two months from the date of publication of the application in the BPI.
. Genuine Use: In opposition proceedings, the applicant may require the opponent to prove that the earlier trademark on which the opposition is based has been put to genuine use, provided it has been registered for more than five years.
For many, the Paris Convention for the Protection of Industrial Property is the “constitution” of Industrial Property at a global level. As the founding treaty of Industrial Property systems worldwide, it was signed on 20 March 1883.
Through this Convention, the signatory countries form a Union for the protection of Industrial Property. One of its fundamental principles is national treatment, under which nationals of Union countries enjoy, in all other member countries, the same advantages and legal conditions granted to their own nationals.
Another key concept is the right of priority, which provides that an applicant who files an application in one Union country benefits from a priority right to seek protection for the same right in other Union countries—within 12 months for inventions and 6 months for trademarks.
It is also worth noting that this Convention already established a legal framework for the protection of well-known trademarks.
A patent is the Industrial Property right par excellence, used to protect inventions. For an invention to be patentable, it must meet three requirements:
A patent grants its owner exclusive rights of use. It has a maximum term of 20 years from the filing date, subject to the payment of annual maintenance fees (annuities). Failure to pay these fees results in the lapse of the patent.
In the case of pharmaceutical patents, the term of protection may be extended for an additional period of up to 5 years.
At the end of the 20-year term (or earlier, if the patent lapses due to non-payment of annuities), the invention enters the public domain and may be freely used by third parties.
The scope of protection of a patent is determined by its claims. The patent specification must also include a description and, where applicable, drawings that assist in interpreting those claims.
A prejudicial issue is a matter whose resolution is necessary in order to decide another issue. These are issues that must be examined by a judge before ruling on the merits of the main action.
In judicial proceedings, a prejudicial issue arises where the determination of the substance or merits of a case depends on the prior resolution of another issue which, according to the logical structure of the decision, must be addressed first.
Like Geographical Indications, Protected Designations of Origin have gained increasing economic importance. A Protected Designation of Origin (PDO) is the name of a region, a specific place, or, in exceptional cases, a country, used to designate or identify a product that:
a) originates from that region, place, or country; and
b) whose quality or characteristics are essentially or exclusively due to the geographical environment, including both natural and human factors, with production, processing, and preparation taking place within the defined geographical area.
Examples include Port Wine and Serra da Estrela Cheese.
. What it is: Before issuing a final decision, the Portuguese IP Office (INPI) may issue a provisional refusal if it identifies absolute grounds (e.g., lack of distinctiveness) or relative grounds (e.g., likelihood of confusion with an earlier trademark).
. Procedure: The applicant is notified of the provisional refusal and has one month (extendable by an additional month) to respond, by submitting arguments or amending the application to overcome the objections.
. Outcome: If no response is filed, or if the arguments are not accepted, the refusal becomes final.
This is the objective of anyone applying for a trademark: to have it registered. Trademark registration, in addition to providing legal protection, also adds value to the mark.
A trademark registration is valid for 10 years from the filing date and may be renewed indefinitely, in whole or in part, for equal periods.
In Portugal, once the trademark has been granted, the owner should use one of the following indications alongside the mark to show that it is registered: Marca Registada, M.R., or ®.
. Duration: A trademark registration is valid for 10 years from the filing date of the application.
. Procedure: To maintain exclusive rights, the owner must renew the registration for successive 10-year periods, upon payment of the applicable fees.
. Payment Deadlines: The renewal must be requested within the last 6 months of the registration’s validity. A further grace period of 6 months is available after expiry, subject to payment of a surcharge.
This is the first step to be taken when seeking to protect a trademark. An Industrial Property Agent (AOPI) will carry out clearance searches in databases and other relevant sources to assess the likelihood of success of a potential application before the Instituto Nacional da Propriedade Industrial (INPI).
Conducting searches helps anticipate potential outcomes, as well as identify risks and opportunities, enabling the definition of the most effective and appropriate protection strategy at an early stage.
An age-old practice, trade secrets were only formally regulated in the Portuguese Industrial Property Code in 2018. To qualify for protection as a trade secret, information must cumulatively meet the following requirements:
A trade secret is another way of securing exclusivity, safeguarding the underlying Intellectual Property. In many cases, it can serve as an alternative to patent protection, although it carries certain risks. A trade secret necessarily depends on the ability and means to keep it confidential.
While a patent is limited in time (generally 20 years), a trade secret remains protected for as long as it remains secret. The formula of Coca-Cola is a classic example of the importance and effectiveness of this form of protection.
A trademark is the most widely used Industrial Property right among Portuguese companies. In Portugal, more than 23,000 trademark applications are filed each year (based on 2020 data, including national, European Union, and international trademarks).
A trademark grants its owner an exclusive right of use, allowing them to prevent third parties, without consent, from using that distinctive sign.
The products and services for which trademarks are most frequently filed in Portugal include: advertising; education, training, and sporting and cultural activities; food and drink services and temporary accommodation; and alcoholic beverages.
In terms of the geographical distribution of applicants (2020 data), 37.0% originate from the Lisbon Metropolitan Area, 33.1% from the North region, and 18.6% from the Central region.
The English term used to refer to a (registered) mark. A trademark carries significant economic weight and importance. In countries such as the United States, Japan, or Germany, large companies often have dedicated “trademark” departments responsible for the protection, defense, and enforcement of their marks.
In these multinational companies, trademark policy is typically centralized at headquarters, which coordinates all activities related to the company’s trademarks worldwide.
Trademark genericide may be the dream of any marketing director, but it is arguably a trademark owner’s worst nightmare. Genericide is the legal term used when a trademark becomes the common name in trade for the product or service for which it was registered, as a result of the owner’s actions—or inaction.
Although this concept is not widely explored in Portugal, it is well known in the United States. Well-known examples include Jacuzzi, Escalator, and Tupperware, among many others, which illustrate how trademarks can become generic over time.
. What it is: This is the initial step to obtain exclusive rights over a distinctive sign (such as a name, logo, sound, etc.) used to identify products or services. In the case of a logotype, no specific products or services need to be designated.
. Requirements: The application must be filed in Portuguese and clearly indicate the applicant’s details, a representation of the trademark, and the list of products or services (according to the Nice Classification). In the case of a logotype, no products or services need to be specified.
. Priority: The filing date of the application is crucial, as it determines the priority of the right over any subsequent applications.
Traditional Knowledge has increasingly gained prominence on the global agenda in recent years. As a result of extensive work carried out by the World Intellectual Property Organization (WIPO), many Indigenous peoples, local communities, and governments have sought Intellectual Property protection for traditional knowledge and traditional cultural expressions as intangible assets.
Such assets may range from traditional medicine and environmental knowledge to art, symbols, and music.
Genetic resources, as such, are not patentable; however, inventions based on them may be eligible for patent protection. The widespread use and ongoing digital and technological transformation of genetic resources for innovation in the life sciences highlight the need for a coherent and cross-cutting approach to the interface between Intellectual Property and genetic resources.
This is a key principle in trademark protection. The same trademark, intended for the same products or services, may only be registered once.
Of course, different versions of a mark may coexist if they are not identical. For example, the same owner may register a mark in word form, as a figurative mark, or even as a three-dimensional mark. However, the same sign, for the same products or services, can only be subject to a single registration.
The World Intellectual Property Organization (WIPO), known in Portuguese as OMPI | Organização Mundial da Propriedade Intelectual, is the United Nations agency responsible for Intellectual Property matters.
Headquartered in Geneva, Switzerland, it serves as the global hub for discussions on Intellectual Property and is responsible for numerous international treaties in this field. It also acts as the International Bureau for systems such as the International Trademark System and the Patent Cooperation Treaty (PCT).
In a patent search report, this is the type of information no applicant wants to receive. When a document is classified as X, the Examiner is indicating that there is prior art which, on its own, calls into question the novelty or inventive step of the invention.
This is unwelcome news for any applicant, who will need to carefully assess the document and seek to argue that it does not prevent the successful grant of the application.
In the patent application process, Patent Offices issue a search report identifying the relevant documents to be considered in the assessment of the invention, particularly with regard to the state of the art. These documents are categorized by the Examiner to indicate their level of relevance.
Category Y applies when a document, in combination with one or more documents of the same category, suggests that the claimed invention may not be considered to involve an inventive step by a person skilled in the art.