Home > PCT national phase

General information about PCT in Portugal

Is the national route open in terms of the Patent Cooperation Agreement?
Yes, Portugal is bound by Chapter II of the PCT, such that Portugal may be designated or elected for a national phase entry up to 30 months after the priority date. There is one additional month available for national phase entry subject to a surcharge. Currently, there is no reservation or declaration of incompatibilities. 

Note that Portuguese is a PCT publication language for applications filed on or after January 1, 2009.
 
What types of protection are possible to obtain through this route?
Both patents and utility models - a utility model may be sought instead of or in addition to a national patent. In addition, or instead, an European patent covering Portugal can also be pursued through the European Patent Office.
 
Is there a possibility for re-establishment of rights in respect of a missed time limit by the Portuguese Office?
There is. The request must be made within 2 months from the removal of the cause of non-compliance and within 12 months of the original time limit. The omitted act must be carried out within the same time frame and a fee must be paid. The re-establishment is done without prejudice to the rights of third parties who, meanwhile and in good faith, have started to use the invention. Note that the Office applies the "due care" criterion. 
 
Is there restoration of the right of priority as a receiving or designated Office?
Yes, both as receiving or designated Office. Note that when restoring a priority right, the request must be made within 2 months of the priority period. Again, the Office applies the "due care" criterion.
 
What will happen in terms of examination?
Applications for patents for invention are subject to substantive examination (novelty, inventive step and industrial applicability). The examiner will usually take into good consideration the PCT search and examination products. 

Note that Portugal does not have post-grant opposition system like that of the European Patent Convention (EPC). There is an opposition period of two months after national entry, requiring written grounds and payment of a fee. Diligent watch is required as the 2-month period is obviously very short. 

Utility model applications only undergo a formal verification, unless substantive examination is requested by the applicant or other interested party. Note that legal enforcement of the utility model requires a positive examination. An utility model will be considered inventive if it merely offers a practical or technical advantage for the manufacture or use of the product or process in question. 
 
Are there any patent prosecution highway agreements (PPH)?
Yes, there are. Currently, PPH agreements exist for acceleration of examination for both national and PCT work products. These are also valid for national applications.The national PPH guidelines can be found here.
Portugal has joined the Global PPH Pilot whose members are Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, Russia, Spain, Sweden, United Kingdom, United States and the Nordic Patent Institute. Portugal also maintains a direct agreement with SIPO (China). 

Can I file third-party observations in respect of a PCT application?
Not really. Portugal does not have a third-party observations system like that of the European Patent Convention (EPC). Although, during examination, any person may submit informal comments on the lack of conformity of an application with the provisions of the patent law, it is not legally clear how, or if at all, the case examiner will take these into consideration. 

When do I have to pay annual fees? Is there a grace period?
Check out these answers in the area about maintaining national patents and applications.

Who can file patent translations for PCT national phase entry in Portugal? 

The national law does not specify any particular requirement for this translation, however it seems legally sensible to follow the same requirements as for filing translations for European patent validations.

Note that for EP validations, it is required that, if the applicant or proprietor is not resident or established in Portugal, the responsibility of translations must be borne by an official industrial property agent (AOPI) or a by a representative accredited by the Industrial Property Office (INPI).  

Portugal as a receiving office for a PCT patent application 

The Office is competent under the PCT for nationals and residents of Portugal. The competent search and examination authority is the EPO.   

Patent Cooperation Treaty (PCT) applications can be filed in Portuguese, French, English or German. 

Applications filed in Portuguese should be followed within one month by a French, English or German translation. This can be done later with a surcharge according to standard PCT regulations.

Applications which are not filed in Portuguese must be followed within one month - unless a Portuguese priority is claimed - by a translation of the application including the drawings, even if these contain no text for translation.

Is there a provisional protection for PCT patent applications?

Yes, national law provides provisional protection after publication of the PCT application, said protection being equivalent to published national patent applications, provided that if PCT publication was not in Portuguese, a translation of the claims, accompanied by a copy of the drawings, is filed. 

A notice is then published in the patent bulletin and, simultaneously, the translation together with the drawings, if any, is made available to the public. 

Provisional protection may be called upon even before publication, against a third party who has been notified of the submission of the application and received the details of the case.

What are the rights conferred by the provisional protection?

The provisional protection provides the same protection as that of a granted patent, to be considered in the calculation of any compensation. Nevertheless, verdicts in suits brought up on the basis of provisional protection cannot be delivered before the final grant or refusal of the application, as the judicial case is suspended at the end of the submission of the arguments by the parties. 

Information on double patenting via national and international rights

Can I protect the same invention by simultaneous national and PCT patents?
There is no provision in the law against double patenting via a PCT patent application and a national patent. Generally, you should assess very carefully if there is a real need for protection of an invention by two simultaneous rights.