1.1 What are the principal sources of law and regulation relating to patents and patent litigation?
A new Portuguese Industrial Property Code came into force on 5 March 2003. This Code, approved by Decree-Law No 36/2003, includes provisions relating to patents, utility models, industrial models and designs, trade marks, appellations of origin and geographical indications, establishment names and emblems as well as awards. This Decree-Law seeks to ensure that the various provisions of Portuguese IP law are harmonised with relevant international and Community law and should in practice improve and extend IP protection over patents, designs, and trade marks.
As far as patents are concerned, the Portuguese Industrial Property Code (‘IPC’) provides that the same invention may be protected either by a patent or a utility model. Two further items have been included in the IPC, the first is the working of the inventions and the second is the regime relating to the ‘SPC-Supplementary Protection Certificate’. In addition, the requirements with which claims, descriptions, abstracts and drawings are required to comply have been further particularised and defined. The annual validity periods and annuity payment terms have also been amended.
On coming into force, Decree-Law No 36/2003 revoked the following legislation: Decree-Law No 16/95, of 24 January 1995 – as amended (the previous Industrial Property Code); Decree-Law No 106/99 of 31 March 1999 (introducing a supplementary protection certificate for plant protection products); Law No 16/89 dated 30 June 1989 (relating to the protection of semiconductor topographies); Order No 67/95, of 27 April 1995. The IPC is now the principal source of law and regulation which governs patents and patent litigation. In fact, the IPC not only covers patent regulation, but also includes provisions relating to criminal offences (ie the infringement of exclusive rights conferred by a patent), and other offences subject to legal sanctions (namely, unfair competition). As far as civil proceedings are concerned, the IPC sets out a legal defence procedure in respect of all private industrial property rights (including patents), whereby industrial property owners can prevent third parties from directly or indirectly infringing their rights.
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of conflict?
Given the nature of the Portuguese judicial legal system, in the event of a conflict, the order of priority of the relevant sources is as follows:
2.1 In which courts are patents enforced? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
Issues regarding industrial property rights are dealt with by the commercial courts.
These courts were established pursuant to (EC) Council Regulation No 40/49 of 20 December 1993 when Member States undertook to create specialised courts for the purpose of determining issues relating to the Community Trade Mark.
Portuguese commercial courts are considered to be specialised within the civil system but do not, however, have judges specialising only in industrial property. In fact, the Portuguese judicial system does not specifically contemplate the existence of a patent court.
The commercial courts have continued to increase the scope of their jurisdiction which has in practice led to a backlog of cases and delays in the giving of timely decisions in industrial property proceedings.
Notwithstanding the fact that Portuguese judges do not have specific training in IP matters, commercial courts usually hand down well-reasoned and clear judgments.
The Lisbon Court of Commerce is responsible for deciding appeals against decisions of the Portuguese Industrial Property Office on applications to grant or refuse industrial property right applications.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
Portugal is a civil law country and therefore case law is not binding; however, precedents may be referred to and are considered to be persuasive. This means that the parties are free to submit decisions on other similar cases for the courts to consider. Portuguese courts (judges) are not, however, bound by these prior decisions. Apart from what is referred to as the Assento, a final and mandatory sentence issued by the Supreme Court of Justice in circumstances where an appeal is made to it based on a conflicting Supreme Court decision on the same point of law, judicial decisions are not generally considered to be sources of Law in Portugal which is why judges are not bound by them. This principle applies equally with regard to the effect of the decisions of foreign courts. (See also response to blocking torpedo actions further below.)
Despite this, judicial statements and arbitration awards may be used in evidence in separate proceedings, provided that the other party participated in the previous proceedings and the new action refers to the same party.
Decisions of foreign courts must generally be subject to an exequatur procedure. If, however, the decision is solely to be presented as evidence it may be accepted irrespective of any formalities although always subject to the judge’s discretion on its probative value.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg Patent Office)?
The regime and procedures relating to infringement have been amended by the IPC. Currently, invalidity actions must be commenced by way of separate proceedings: the initial stage requires invalidity actions to be filed with the INPI (Instituto Nacional Propriedade Industrial (State Patent Office)). If one of the parties does not accept the decision issued by the INPI they may appeal to the judicial courts (Lisbon Court of Commerce).
In relation to infringements, the Portuguese legal system makes provision for the commencement of a judicial action against infringements of private industrial property rights through either the civil or criminal route, stipulating in each case different sanctions.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
Parties must be represented in court by a lawyer. Representation before in the INPI may be conducted by patent officers (authorised IP practitioners).
2.5 What is the language of the proceedings? Is there a choice of language?
Patent applications filed in Portugal at a domestic level must be filed in the Portuguese language. European or international patent applications filed in Portugal may, however, be presented in any of the languages stipulated in the European Patent Convention of 5 October 1973 or in the Patent Cooperation Treaty, concluded in Washington, of 19 June 1979. If the European patent application is not filed in Portuguese, it should be accompanied by a Portuguese translation of the specifications, claims and abstract, and a copy of the drawings included in the application, even where these do not contain text capable of being translated, unless the European patent application claims priority over an earlier patent filed in Portugal for the same invention. The same applies to the international patent applications.
All proceedings regarding patent litigation in the Portuguese courts must be conducted in the Portuguese language. The evidence of witnesses in court may be given in any language with a translator appointed to assist for this purpose.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
While procedurally available, extra-territorial injunctions are not common in Portugal in relation to patents.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
The legal grounds for justifying cross-border jurisdiction in a typical torpedo action (ie where the patent owner is located in a different country from where the proceedings were filed) are not accepted by some of the highest courts in Europe. There are, however, certain jurisdictions, which do recognise the blocking effect of foreign proceedings relating to the same patent and subject matter by suspending their infringement proceedings in favour of the declaration action abroad. The torpedo strategy therefore may still be effective in those jurisdictions. This is a question, however, in respect of which Portuguese jurisprudence has no clear direct precedent. As of the date of this publication a search of the Portuguese higher courts and their respective case law databases revealed no corresponding jurisprudence on this issue. In addition, the potential duplication of actions between two different legal systems is also likely to contribute towards complexity and consequent uncertainty in the solution to be adopted by the Portuguese courts.
It is unlikely that the blocking effect of these actions will at present be recognised in Portugal. While this view is arguable, the Portuguese courts are unlikely to treat this matter as a typical case of lis pendens. In other words, it is unlikely that a Portuguese judge would decline jurisdiction in favour of another European court.
Torpedo actions are, in fact, under Portuguese civil procedure law, connected with two possible circumstances and respective remedies:
These two circumstances give rise to different remedies. In a lis pendens situation, the rules provide that a court, other than the court first seized, must decline jurisdiction in favour of the court first seized. It is important to note that this issue must be analysed with Council Regulation EC 44/2001 in mind. These rules apply since the question is one between the courts of two Member States. The application of these rules is important since Portuguese law would otherwise consider a foreign court action irrelevant and proceed to hear the same action. In practical terms, it must consider the foreign action under Art 27 of EC Regulation 44/01. The effect of this provision is quite similar to Portuguese domestic law: the ‘second’ court must decline jurisdiction in favour of the ‘first’ court. There are, however, some differences that must be taken into account since they prevail over domestic law: the ‘court first seized’ in determined under the Regulation by reference to the provisions of Art 30, ie: the first court to receive the action (with some modifications) while under Portuguese law, the criteria is the first court to summon the defendant.
Conversely, in a situation where a decisive question is being tried in another action notice may be given to a judge determining a certain case (the ‘dependant proceedings’) that, in another action (the ‘decisive proceedings’), a question having a direct influence on the outcome of the ‘dependant proceedings’, is being tried. In this situation, Portuguese law does not require that jurisdiction be declined. The judge of the ‘dependant proceedings’ may stay these proceedings awaiting the decision of the ‘question’ in the ‘decisive proceedings’. There is no requirement that the ‘decisive proceedings’ be lodged first as a condition for suspending the ‘dependant proceedings’. This is a power given to the judge and not an automatic consequence although this power is not totally discretionary. If the judge is convinced that this dependency exists, unless he feels that the ‘decisive proceedings’ were abusively lodged in an attempt to stay his action or that the suspension is not practical (eg the ‘dependant proceedings’ are to be concluded shortly), he must stay his action, await the decision of the ‘decisive proceedings’ and consider this result in his own case.
Please note that Art 28 of EC Regulation 44/2001 – ‘related actions’ – addresses a situation which is apparently similar, although we consider that the notion of ‘related proceedings’ adopted therein is even wider since it covers cases which ‘are so closely connected that it is expedient to hear and determine them together and avoid the risk of irreconcilable judgments resulting from separate proceedings’. The remedy provided in Art
28.1 is similar to provisions of Portuguese law and a judge is bound by these. The notion of lis pendens is defined in Portuguese law as a complete and full duplication of an action in all its aspects, ie the same parties, same cause of action and type of relief sought.
Given this, a potential action lodged first in another European country seeking ‘negative declaratory relief’ and not the full determination of all issues in dispute is unlikely to be considered the same action (ie a duplication). The ‘main question’ in the Portuguese courts to be determined in the case of patent infringement would be one regarding the ownership of the patent right and the consequent liability of the infringer. This is why we cannot exclude the argument that this is not a typical lis pendens matter. However, formally, the actions are different. It is likely therefore that the Portuguese courts will see this case, not as a duplication of the same cause of action requiring it to decline jurisdiction, but as a case falling within situation (2) above giving rise to a stay of the Portuguese action (awaiting the foreign court decision) as a remedy to avoid irreconcilable judgments.
It is important to consider, however, whether a Portuguese judge would order the stay of his action – as described above – should negative declaratory proceedings be lodged abroad. It is almost certain that he would if the action is lodged abroad before the Portuguese one. The question of patent ownership and consequent liability of the infringer is likely to be considered a ‘decisive question’ to the proposed action in Portugal. The judge would be of the view that there is a threat of irreconcilable decisions and treat the foreign action as a legitimate action lodged first in a court with jurisdiction connected with the matter and proceed to stay the Portuguese action.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
According to Art 97 of the IPC, assessment of infringement is ‘determined through the content of the claims in respect of the description and drawings shall serve to interpret this’.
Given that the underlying principle is to provide patent owners with fair protection, assessment of infringement in Portugal must take into account both Art 97 of the IPC and the European Patent Convention, to which Portugal is a signatory.
Article 97 of the IPC is based on Art 69 of the European Patent Convention. However, neither provision clarifies the extent to which the protection afforded by the patent is confined to the strict literal meaning of the wording used in claims, or whether they serve as a mere guideline and the actual protection conferred may extend to any ‘equivalents’. Notwithstanding this, as Portugal is a member of the European Patent Convention, both Art 69 and its relevant protocol should be applied by the Portuguese courts as a legal framework in the interpretation of patent claims and determining the extent of protection of the patent claims. The new protocol on the interpretation of Art 69 EPC states, at Art 2: ‘For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is an equivalent to an element specified in the claims.’
Given this, and in view of decisions of the Portuguese courts on patent claims, it is fair to conclude that, even though not directly recognised, the doctrine of ‘equivalent means’ is applied by the Portuguese courts.
Several defences might be advanced against an alleged patent infringement, namely:
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
As a general rule, actions concerning the enforcement of intellectual property rights are excluded from antitrust violation.
According to Art 33 of the IPC, a patent may be declared wholly or partially null and void:
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
Other than under Art 33 of the IPC, patents cannot in other circumstances be partially invalidated. Patents cannot be transformed into utility models, although the opposite is possible.
The parties are required to provide the court with their complete written submissions at the start of the action in respect of the facts and remedy they are seeking. The overriding principle is that the case as initially pleaded should be maintained. However, in certain circumstances, amendments to the facts supporting the claim and relief (order) sought are permitted as follows:
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
Valid patents can be deemed unenforceable in several circumstances, eg expiry of time limits: permission from the patent owner (this can include a licence or even a sales contract); public interest; and investigative actions.
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
Taking into account the regime provided for under Art 317 of the IPC, a patent holder is permitted to claim in the same law suit both patent infringement and unfair competition based on the same set of facts.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a license need to be registered to sue?
As a patent is an exclusive right granted for an invention, the legitimacy to act against unauthorised use vests, in the first instance, in the patent owner/holder. According to the IPC, the registration is determinative in this regard.
The patent holder may, however, transfer or assign his rights, exclusively or in part, to a third party (licensee or distributor) who, in these circumstances, would be entitled to use the patent and act against any unauthorised use.
The right to sue for patent infringement does not depend on the final register information, but instead on the application to register.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
Under the Portuguese Civil Procedure Code, any person may apply to the civil courts seeking a declaratory statement based on the existence or not of a legitimate interest – relating to their assets or a certain right (including patents). For this purpose, the party need only substantiate to the court their judicial capacity to act (and therefore file the court action) as well as justifying the purpose of the proceedings.
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
Any party not respecting the inherent rights of a patent may be sued. Even company directors may be sued where there is strong evidence that they are responsible for any malpractice and have acted in a culpable manner.
If criminal evidence is presented that a certain person induced another party to infringe a patent, despite not being the person who directly committed the infringement, this person may also be held responsible for an infringement offence (as the moral author of the criminal conduct).
Yes. The Portuguese Civil Procedure Code permits parties to alter their position by amendment, in relation to the identity of the parties.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
Depending upon the nature of the infringement under the Portuguese Industrial Property Code, our legal system permits the taking of judicial action against infringements of private industrial property rights through either civil or criminal proceedings, providing in each case different sanctions.
With regards to criminal proceedings, the Portuguese Industrial Property Code includes provisions relating to criminal offences (namely infringement of the exclusive rights conferred by a patent, utility model or topographies of semiconductors products, infringement of the exclusive rights conferred by designs and models, counteracting, imitation and illegal use of a trade mark) and other unlawful acts (namely unfair competition), which are punishable by law with prison sentences or pecuniary sanctions (fines) respectively.
Yes, EU Regulation 1383/2003, which provides for such measures, applies directly in Portugal.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
Disputes concerning intellectual property rights constitute one of the types of actions traditionally considered to raise special problems in relation to ADR.
The IPC expressly recognises the availability of ADR to resolve patent disputes. In fact, under Portuguese Arbitration Law, ‘any dispute relating to disposable rights that has not been exclusively submitted by a special act to a Court or to compulsory arbitration, may be submitted by the parties for decisions by arbitrators’.
Bearing in mind this rule one might say that, under Portuguese Law, the parties may submit a dispute to arbitration provided that:
Bearing in mind the IPC, ADR courts may be constituted to consider the same issues which are capable of being be submitted to judicial courts. Decisions issued by ADR courts will be recognised and executed by the INPI.
Parties must provide the courts with their written submissions, and they are obliged to present all their arguments and all written evidence. Thereby, on the exchange of pleadings/statements of case, the court is in possession of all relevant facts (except for evidence to be produced at later stages).
Once statements of case have been exchanged, the judge summons the lawyers to appear before him. This preliminary hearing has several purposes:
This latter list is particularly important, since the final decision on the issues of fact will be made in the form of answers to those questions, and no other issues of fact maybe taken into account.
In straightforward cases, the judge may dispense with the preliminary hearing.
After this, submissions on the facts take place between the parties; the judge subsequently gives his factual decision. Finally, parties will present and raise arguments on the legal grounds whereafter the final judgment is then handed down.
Disputes are decided by a judge.
6.3 To what extent are documents, affidavits, witness and/ or (courtappointed or private) experts used? Is it possible to cross-examine witnesses?
As a general principle, the judge is required to take into account all elements of proof presented by the parties. However, evidence will not be admissible where it has not been the subject of a hearing where the party who opposes it was not present or able to challenge the evidence.
Testimonial/witness evidence (oral) is in general admitted, except in cases where a written document deemed to have full evidential force is required.
Documents in support should be filed together with the written pleadings, but they may be filed at later stages and normally right up until the end of the trial. In the latter case the court may fine the party presenting late documents, unless it can show it only gained access to the document at a late stage.
Legal and technical expert opinions can be filed at any stage of the proceedings.
Foreign decisions regarding private rights may serve as elements of proof before a Portuguese court. The judge has a discretionary power to decide on the value of this evidence.
Despite the existence of documents (when considered not to have full evidential strength), testimonial evidence is normally given and tends to be considered the most relevant form of evidence. The evidential value of witness depositions is left to the appreciation of the judges. Witnesses are required to be mentally and physically able to testify. Any spouses, partners or ex-spouses cannot be forced to testify in cases involving their other spouse or partner. In the same way, parents cannot be forced to stand as witnesses in cases involving their descendents or adopted children and vice versa. Individuals bound by professional confidentiality/privilege or state secrecy may also be deposed as witnesses.
There are limits to the number of witnesses that can be called by each party (generally 20) and normally each party may only have up to five witnesses giving evidence on the same fact.
Witnesses are expected to give evidence based on their own knowledge; therefore hearsay evidence is not, in principle, admitted.
At the end of each testimony, the counter-party attorney is entitled to question the witness provided that these are in connection with the explanations given during the testimony. Witnesses may be confronted with documents on the file and may use their own documents, provided that they do not read out answers.
Besides the cross-examination, the counterparty may also: impeach the witness at the beginning of the deposition; challenge the witness at the end of the testimony, allege facts or present documents to discredit it; or request a direct confrontation with any other witness.
Experts may be called to depose as witnesses and the court have discretion as to what weight should be attached to their testimony.
The parties or the judge may request/order expert evidence. When ordered by the court, normally there is only one expert. Anyone may serve as an expert. Where, however, the court determines the expert, it will commonly request relevant professional representative organisations to indicate an expert. In other cases the court maintains its own lists, either delivered by professional organisations or composed by previously nominated experts. If there is a state entity specialised in the field in question, the court will usually ask it to appoint the expert.
Any party may separately request an expert. Whenever a party requests expert evidence and there is more than one expert (the maximum being three) and the parties agree on the identity of the experts chosen, the judge appoints those experts unless he has grounds for believing they are not competent.
If the parties cannot agree on the identity of the experts, each party appoints one expert and the judge will appoint a third.
The experts prepare a joint report in which they are required to answer the questions raised. Those questions are limited to matters of fact. They may subsequently be called to court in order to provide explanations on the report.
The court, on its own initiative or following a request from one of the parties, may order an inspection of a certain location or a reconstruction of any event relevant to the proceedings.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
Pre-trial disclosure of documents is not permitted in Portugal in the same manner as it is in common law systems. A party may request the court to order the other party or any other person/entity to provide a certain document. The court may refuse the application where the documents requested are considered irrelevant to proving the fact in issue. The party is required to identify the document to the extent possible and explain how it is relevant to the action.
If the document is not presented and no acceptable justification is given for this, the court applies a fine. The court may also order any measures it deems appropriate in order to obtain the document.
The court may also order, ex officio, the disclosure of documents necessary to establish the truth.
In principle, evidence obtained through discovery in other jurisdictions is admissible in Portugal, although the procedure for obtaining this evidence may not be accepted. In exceptional cases, where the discovery proceedings have gone beyond certain limits, considered important by the Portuguese system, the issue could be raised and it is possible for the evidence to be held inadmissible. In any event, the value to be attributed to the evidence is left to the judge.
Injunctive relief is also available in order to secure evidence. Likewise, if there is a risk that the evidence may be destroyed or lost, it is, for example, possible to request the court to hear the witness (even before the case is issued), make an inspection, etc.
6.5 What level of proof is required for establishing infringement or invalidity?
According to Art 98 of the new Portuguese Industrial Property Code (IPC), where an infringement dispute arises in connection with a patented invention which involves a manufacturing process for a product, the defendant accused of manufacturing a similar product is required to provide evidence with details (to the extent required by the court) of its manufacturing process for the product in question. In fact, the IPC has conformed to the reverse burden of proof principle.
This means that the law expressly creates a presumption in favour of plaintiff-patentee that the allegedly infringing patent process is not different from the patented process and thus the burden of proof is shifted to the defendant who is required to prove that the process used in the manufacture of its product is different from the patented process. In most infringement cases, the burden of proof is invariably on the plaintiff-patentee to demonstrate infringement.
The standard of proof required is to demonstrate invalidity through clear and convincing evidence and requires a finding on the evidence that what a party seeks to prove is more probable than not. For this reason the primary means of introducing evidence is through the live testimony of witnesses, and public certificates attesting, directly or indirectly, to the infringement or invalidity. On the other hand, in patent infringement cases the parties will usually present expert witnesses to give evidence on technical matters relating to the infringement and validity, or financial matters relating to damages (experts are permitted to testify as to their opinions on matters within their recognised area of expertise). The court may also appoint an expert to advise the court if it deems this necessary.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Given the current problems faced by the Portuguese judicial system of a shortage of judges and specialised judicial assistants, as well as the increased jurisdiction and case load of the commercial courts (eg, with insolvency proceedings – requiring urgent decisions), the efficiency of the commercial courts, as well as that of the civil and criminal courts, is experiencing difficulties. By way of estimate, it may take anything from eight months to four years for a patent infringement action to be resolved.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
A judgment in favour of the patent holder in proceedings on the merits usually includes injunctive relief by which the infringer is prohibited from further manufacturing, selling, offering distributing or possessing infringing goods. Also, a declaratory ruling that the defendant has to pay monetary remedies (as damages) accompanied by an order against the infringer to render an account on his acts of infringement is part of the ruling. The information the defendant has to provide assists the plaintiff in assessing damages and in identifying further infringers in the supply chain or in downstream commerce. In addition, the court may rule that the defendant is required to destroy all infringing products in the defendant’s possession.
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
This is not possible.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
The plaintiff may elect between a reasonable royalty, infringer’s profit or his lost profits. In practice, only the first two options are important, since the requirement for the patent owner to prove that he actually suffered loss of profits is quite high in Portugal and is usually only met where the patent owner can establish that he would have been able to sell his own products instead of the infringer’s products to customers. This fact is often difficult to establish where there are further market competitors besides the patent owner and the infringer offering similar products which could have been bought as a substitute or alternative.
In relation to the two other methods, reasonable royalty or infringer’s profit, the first is still the most common method for calculating damages.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Preliminary relief is available for a patent owner in Portugal. Possible remedies in preliminary proceedings are an injunction to prevent the infringer from manufacturing, selling, offering or distributing infringing goods as well as a claim for information regarding the origin and the distribution channels of the infringing product in the case of an obvious infringement.
A request for a preliminary injunction must be filed with one of the competent district civil courts, and, if granted ex parte, preliminary relief will be available within days. In order to be successful the application on the question of infringement must not require an in-depth analysis of the claims (merits) and the infringement.
If these requirements are not met the preliminary injunction will not be granted without an on notice hearing. In any event, the court must be able to understand the subject matter of the patent as well as the infringement without the help of an expert. Secondly, the validity of the patent must be strong.
A third requirement is the so-called ‘urgency’ for the petitioner to obtain preliminary relief. Basically the petitioner has to show that he will suffer severe damage if an injunction is not granted.
An injunction can be immediately enforced without a security. A judgment by which a preliminary injunction is granted or denied can be appealed to the Court of Appeal.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Yes. Generally the court will hear the infringer. In cases, however, where the presence of the infringer might affect the purpose and objective of the injunction, the judge might decide to order the injunction without giving prior notice. In these cases, where the injunction is ordered without notice to the defendant, he will be summoned to present his defence within 10 days. At this point, the defence of the infringer is attached to the main proceedings.
8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
Yes. In fact, our civil procedure code foresees the possibility of the plaintiff requesting the court to order that the defendant’s premises are searched and a description of the infringing goods provided.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
Yes.
Preliminary injunctions are, by nature, urgent proceedings. The plaintiff must file the action in court, and submit all the relevant evidence. After reviewing the merits of the claim the court will notify the infringer to present his defence. If a considerable risk exists, the judges might decide to grant the preliminary injunction without hearing the infringer.
Once all the evidence has been considered, the preliminary injunction may or may not be granted. If the preliminary injunction is granted, the plaintiff must commence main proceedings to confirm the injunction.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
As a general principle, the judge is required to take into account all elements of proof presented by the parties. However, in preliminary injunction proceedings, experts are generally not used primarily due to the urgency of these types of proceedings.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
It is not necessary to present exhaustive proof. Summary proof of the right claimed in court is sufficient. The parties do, however, have to fully justify the necessity of the injunction, and the risk of loss/dissipation.
Normally between 6–8 weeks in total. Please note, however, that this is an estimate and may change depending upon the court list and backlogs.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
Yes.
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
Appeals may be filed either in the administrative phase of the patent application, or at a later stage, to protect the rights of the patent holder.
Preliminary injunction proceedings may also be subject to appeal, as well as, of course, judgments of the civil and criminal courts.
The Lisbon Court of Commerce is the competent authority to decide on appeals against decisions by the Portuguese Industrial Property Office to grant or refuse any industrial property rights. In these circumstances, decisions of the Lisbon Court of Commerce may be subject to (only one) appeal to the Tribunal da Relação de Lisboa (2nd instance court).
9.2 How long do appeal proceedings typically last?
Depending on the appeal being made, appeal proceedings are likely to last at least six months.
10. LITIGATIONS COSTS
10.1 What level of cost should one expect to incur to take a case through to first instance, preliminary injunction proceedings and/ or appeal proceedings?
Payments of court fees depend only on the initial value of the claim and therefore can be estimated by the parties according to a legal table. Court fees are due at distinct moments of the proceedings: part is paid at the beginning of the proceedings, and the remainder at the end, upon notification by the court.
Judicial costs comprise the ‘justice fee’ and judicial expenses (established in tables approved by regulation).
10.2 Are costs recoverable from the losing party?
The parties bear their own legal costs. However, at the end of the action the successful party is entitled to collect these from the unsuccessful party, with the exception of the costs incurred in connection with the fees of legal advisors (save in exceptional circumstances and then in very marginal amounts). If both parties have partially succeeded in their claims, the costs are split according to the percentage of their successes.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
N/A.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites
Authors/useful works
Oliveira Ascensão Direito Comercial (Lições), II (Direito Industrial, policopiado, AAFDL,
Lisboa, 1988).
JP Remédio Marques Introdução do problema das invenções biotecnológicas in Direito Industrial
Vol I (Almedina, Coimbra, 2001), pp 177–333.
JP Remédio Marques A patenteabilidade de animais e vegetais in Lusíada Revista de Ciência e
Cultura No 2 (1998), pp 341–434.
JP Remédio Marques Patentes de Genes Humanos? (Centro de Direito Biomédico, 4, Coimbra
Editora, Coimbra, 2001).
JP Remédio Marques Patentes Biotecnológicas e Direitos de Obtentor de Variedades Vegetais,
Diferenças de regime e pistas para a respectiva articulação in Direito Industrial, Vol II (Almedina,
Coimbra, 2001).
MJA Pupo Correia Direito Comercial (7th ed, Lisboa, 2001), p 195 et seq.
Silva Carvalho O objecto da Invenção (Coimbra Editora, Coimbra, 1970).
Useful websites
www.inpi.pt www.dgsi.pt
