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The draft law for a new Industrial Property Code

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Last April the Council of Ministers approved a draft law for a new Industrial Property Code already admitted last May in the Assembly of the Republic.

Trade Secrets

Regarding trade secrets protection, the draft law aims the transposition of a European Union directive, Directive 2016/943 of the European Parliament and of the Council of 8 June of 2016. In this respect, if approved in accordance with the current draft, the new Code may innovate by having an autonomous chapter in Title III concerning “Infringements”. Such an innovation suggests an autonomous protection of trade secrets from unfair competition. In fact, the protection of commercial secrecy in the current Industrial Property Code is included in the definition of unfair competition acts, which led to a less contested understanding that the protection of trade secrets could only be made in accordance within the unfair competition regime.

If the autonomy of the trade secret protection is set forth at the new Code, it will enable the trade secrets protection outside the scope of a competitive relationship, allowing economic operators to better detail, and with legal support, their strategy regarding the protection of their most valuable information. The courts will continue to play the important role in defining the limits of the protection, considering the various, and very necessary, exceptions to the said protection, in defence of, inter alia, freedom of expression, press, work and private economic initiative.

 

Patents

In another context, one of the most significant proposed changes is the extinction of the necessary arbitration in patent litigation deriving from applications for the introduction of generic medicines on the market. The amendment comes in response to the procedural issues raised during these disputes, essentially about the admissibility to argue the validity of reference medicine patents in an arbitration procedure. The issue has even reached the Constitutional Court, and the decisions handed down have led to the awkward possibility of the existence of patents null and void, but only between the parties to the proceedings.

In accordance to the draft law, the abovementioned disputes will be discussed at the Intellectual Property Court, and voluntary arbitration will be admissible in the event of an agreement between the parties.

Also, in the field of patent law, the draft law proposes the inclusion in the Code of an invention ownership regime by workers or collaborators of state-owned legal persons that develop R&D activities.

 

Other proposed amendments

Under the terms of the draft law, trademarks regime will be amended by Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015, which will require changes to the registration process, namely, through the repeal of the requirement to provide a graphic representation of the mark. Under the terms of the draft law it will be possible to simply submit a depiction to enable to determine the object of the protection granted to the trademark owner. With the law reform, it will also be possible to argue the non-serious use of the trademark to put aside an opposition to the registration.

Other aspects could be mentioned, such as the determination that the declaration of nullity or cancellation of design registrations, trademarks, logos, designations of origin, geographical indications and rewards shall result from a decision of the Portuguese Industrial Property Office (INPI), or the express provision of a procedure for INPI’s decisions revocation, which explicitly enshrines the possibility and manner of participation of all interested parties. The next few weeks will allow us to perceive which points will be discussed in detail, and which will have to be improved or which matters will have to be set aside.

We will be following up the discussion of the draft law and will approach the direction that the same will take.

 

Saulo Chanoca, BAS Sociedade de Advogados, RL

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