22 Oct
2020

Portugal

Patentree

Q: How can patent owners best enforce their rights in your jurisdiction?

In Portugal, administrative and judicial actions are available to patent owners, although most patent infringement cases are dealt with through civil suits. Customs intervention can be sought in order to prevent the import of infringing goods.

A complaint may be lodged with the competent administrative authorities or the Public Prosecutor’s Office. The administrative authorities and law enforcement agencies are proactive in combating counterfeiting (eg, complaints can be filed online).

Civil and criminal court proceedings can be initiated by a patent owner or licensee at a state court or arbitration tribunal. The choice between these two courts depends largely on the specific legal situation and, of course, the willingness of the parties to accept a non-judicial dispute resolution process.

Q: Are mediation and arbitration realistic alternatives to litigation?

According to the new IP code, there is no obligation to initiate proceedings through mediation or arbitration. This has been a change from the previous code where Portuguese law provided for mandatory arbitration for reference medicines and generic drugs.

There is also ARBITRARE, a centre of mediation and arbitration fully dedicated to industrial property.

Arbitration tends to be swifter than state court proceedings, but is not necessarily cheaper or more flexible, especially now that Portugal has a specialised IP court.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

The first-instance specialised IP court based in Lisbon has been in operation since 2012. The court is competent to:

  • hear cases relating to IP rights infringement;
  • assess the invalidity of IP rights; and
  • decide on appeals of Portuguese Institute of Industrial Property (INPI) decisions.

The court docket is experienced and responsive, and the long delays and backlogs that were common before the establishment of the IP court are surpassed. Despite the specialised nature of the court, this does not preclude the appointment of external experts in patent cases, either as part of expert panels or as assistants to the court.

Q: What level of expertise can litigants expect from courts?

The specialised IP court hears IP-related cases, with judges proficient in IP matters. There are also appeal judges experienced in IP cases and in the specialised IP court.

In addition, the court can appoint external experts, either as part of expert panels or as assistants to the court. Parties may:

  • request the appointment of external experts;
  • request that expert witnesses be questioned; and
  • submit technical opinions or reports.

Q: Are validity and infringement dealt with together in proceedings?

The IP court is competent to decide on validity and infringement. Accordingly, when a patent infringement case is brought before the court, the alleged infringer will typically initiate a counterclaim for nullity. These will be handled together.

Arbitration tribunals are not competent to declare the nullity of a patent, as constitutional case law has made clear that a declaration of nullity can only be requested before the IP court. In May 2017, the Constitutional Court decided that it would be unconstitutional for arbitration proceedings to refuse to consider nullity arguments if these are made strictly as a defence against infringement.

This is unlikely to be the end of parallel proceedings, as the alleged infringer is not prevented from filing a nullity action at the IP court in parallel to pending arbitration proceedings.

Q: Who may represent parties engaged in a dispute?

Only a lawyer who is a member of the Portuguese Bar can represent parties in court. For administrative proceedings directly (and exclusively) addressed to INPI, a qualified patent and trademark attorney can represent parties, regardless of whether they are a lawyer.

Patent litigation normally involves a team with both legal and technical skills, while the parties are actively represented by one or more lawyers managing the team.

Q: To what extent is forum selection possible in your jurisdiction?

There is no significant possibility for forum shopping in Portugal. Of course, forum shopping within Europe is possible and Portugal is a potential jurisdiction.

The IP court has jurisdiction on patent-related cases and is the only court able to declare nullity. However, complex matters may end up in a different court. For example, bankruptcy cases or contract law cases may be heard in a different court even if a patent plays a part in the dispute. When and if the jurisdiction of the IP court is asserted, the case will be subsequently transferred, but this may not happen in the desired timeframe.

Q: To what extent is pre-trial discovery permitted?

Portuguese law does not foresee a formal pre-trial discovery phase. However, the Industrial Property Code contains a body of injunctive measures to:

  • obtain and preserve infringement evidence; and
  • support follow-up proceedings against the alleged infringer, including the disclosure and seizure of elements (eg, samples, materials, means of production and shipments) needed to prove infringement and other kinds of evidence (eg, banking, accounting or commercial documents).

These measures are typically requested in preliminary proceedings, given their urgency and relevance. Less frequently, preliminary measures may be decided ex parte. This may be highly valuable, for example, in urgent cases where there is an imminent need for the preservation of evidence or a risk of irreversible damage.

Q: To what extent is evidence written and oral at proceedings?

Most evidence is presented in writing; nevertheless, cross-examination is possible and comes in many forms. For example, expert witnesses may be asked to respond to questions regarding written expert opinions or to react to a conflicting expert opinion. Normally, witnesses are required when facts (eg, public prior use) can be proved only by testimony. In these cases, cross-examination may well be critical to the case’s outcome.

Q: What role, if any, can expert witnesses play?

Expert witnesses may give evidence in written form or orally in court. Expert opinions are not binding on the court, even if the experts were designated by the court. In the case of a panel of experts, each party will normally appoint an expert, and the court will appoint a third expert.

The experts are required to produce a report, where agreement or disagreement can be expressed by any of the appointed experts regarding each of the matters in the report. Parties may object or request clarifications. A second expert opinion may also be requested. Expert panels can also be appointed in preliminary proceedings.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

Portuguese courts have applied the doctrine of equivalents on several occasions, but there is no ‘Portuguese’ doctrine of equivalents, as yet. German case law is persuasive to this effect, as is English, French and some Spanish case law. The finer points of equivalence may be difficult to argue or represent before an open court, and a judge or arbitrator may prefer to ask for expert evidence in this regard.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

Some problems may arise in specific and highly complex fields that require technical expertise and sophisticated interplays of law and science. The relatively low number of patent litigation cases in Portugal is admittedly not a positive factor, but the ongoing work of the specialised IP court is expected to continually improve this matter.

The exclusions to patentability are aligned with European case law. Excluded biotech inventions or business methods will normally attract nullity issues and are not typically enforceable.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

Portuguese judges are tied to the general principle of not being bound by previous decisions and exclusively applying the law. However, relevant past decisions in the same field (generally arising from the superior courts) are frequently cited. Of course, binding case law will be adhered to, according to the law, for example, if originating from the European Court of Justice.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Important cases decided abroad can be cited in a Portuguese court decision and every relevant decision is persuasive, even though there is no clear trend on a predominant jurisdiction to be followed. Jurisdictions with a larger number of patent cases may be seen as more persuasive but the proximity to the actual case under suit will be more decisive. In nullity matters, case law from the EPO Boards of Appeal can also be cited.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

A defendant may delay a case in multiple ways. Defendants have successfully delayed cases by repeatedly requesting expert panels, objecting on procedural matters and appealing unfavourable procedural decisions, among other tactics. A well-prepared plaintiff will normally front-load a case and make every effort to conduct a vigorous procedural case, avoiding a potential ensnarement. A well-prepared, proactive and responsive lawyer can make a substantial difference.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

It is fundamental to determine if there is a risk of loss of evidence or irreparable harm to the patent owner caused by a delay in provisional measures. If the provisional measures may cause irreparable harm to the alleged infringer, the court must take this into account and take care that measures are not abused and are justified given the circumstances. There is no strict time limit to file for preliminary measures, but an argument of irreparable harm will be less likely to prevail if it is delayed. Preliminary injunctions are frequently requested in Portugal, as a quicker and more effective way of enforcing patent rights.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

There is a degree of uncertainty in Portugal on this matter and due to the relatively low number of patent cases, data on a few specific court decisions cannot easily be extrapolated to give an accurate prediction for future cases. Typically, 18 to 24 months for a first-instance case is usual, but this can vary considerably according to complexity and delaying tactics by the alleged infringer. Arbitration proceedings tend to be swifter, but the IP court has worked to substantially reduce the duration of proceedings. In the case of arbitration for pharmaceutical litigation, 12 to 18 months is typical for a court decision.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

The costs of a lawyer assessing infringement before litigation are relatively small. However, the costs of infringement proceedings vary significantly, depending on such factors as the value of the dispute, the complexity of the case and the degree of involvement of patent attorneys or expert witnesses. For more complex or important cases, higher amounts should be budgeted for. A cautious estimate for litigation on the merits at first instance can vary between €20,000 and €150,000. Court fees in arbitration proceedings can be substantial.

Q: To what extent are the winning party’s costs recoverable from the losing party?

In general, the losing party pays the court fees. The losing party is also responsible for the fees and costs of the successful party, but legal fees are normally capped. It is expected that larger portions of legal fees may be recovered by successful parties in the future.

Q: What remedies are available to a successful plaintiff?

Remedies include:

  • the award of damages;
  • injunctions prohibiting activities related to the patent infringement; and
  • orders for the destruction of infringing products or the means used for said infringement.

Q: How are damages awards calculated?

Damages awards are calculated by taking into account the infringer’s profits, the resulting damages and lost profits suffered, and the costs incurred through the patent’s enforcement and termination of the harmful conduct. The court may also use, as a basis for calculations, a theoretical royalty that the patentee would have received if the infringer had requested lawful authorisation to use the patent. Punitive damages are not available per se, but a court may consider, within the margin allowed by all previous criteria, a case of repeated or particularly grievous infringement.

Q: Under what circumstances will courts grant permanent injunctions?

A permanent injunction can be granted by the court only after the expiration of the infringer’s right to appeal the decision, confirming that the infringement effectively occurred. The decision can bring together the verdict to refrain from the performance of certain commercial activity, the destruction of goods and the payment of compensation.

Q: Does the losing party at first instance have an automatic right of appeal?

The right to appeal is guaranteed to a losing party at first instance, unless that party accepts the decision or applies outside the legal period for filing the appeal.

Q: How long does it typically take for the appellate decision to be handed down?

A full appeal of a patent infringement decision in Portugal is likely to take more than two years. There are a large number of possibilities that the parties may use to speed up or delay a case and these may cause complexity that could carry over to the appeal instance.

Q: Is it possible to take cases beyond the second instance?

Portuguese law allows for applications to the Supreme Court, provided that the remaining applicable rules are observed (eg, those regarding the value attributed to the case). Nevertheless, this appeal can be based only on the legal aspects of the case. Constitutional matters may be appealed all the way to the Constitutional Court, although this is highly unlikely.

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

Due to a relatively short track record of decided patent infringement cases in Portugal by the Portuguese IP court, this question cannot be answered with certainty. Nevertheless, it may be safely assumed that the IP court is relatively neutral and close to European courts in general. There is some notion of arbitration proceedings being more pro-patentee than state court proceedings, but this may be attributed to past resistance by some arbitration tribunals to consider nullity arguments, albeit exceptionally, as a defence.

Q: Are there other fora outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

In Portugal, administrative actions are available to patent owners, although most patent infringement cases are dealt with through civil suits. Customs intervention can also be sought in order to prevent the import of infringing goods. Arbitration, if agreed by all parties, may also be used.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

In the past the most singular aspect of the Portuguese system was the mandatory arbitration for litigation between pharmaceutical companies based on reference and generic drugs (although it is no longer applicable). The new IP code has brought several changes, including a competence by INPI to assess the validity of registrations of trademarks, design, appellations of origin and geographical indications – subject to appeal to the IP court. The code has also brought the EU Trade Secrets Directive into national law.

Patentree

Edifício Net

Rua de Salazares 842

Porto 4149-002

Portugal

Tel +351 220 028 916

Fax +351 225 322 066

Web http://www.patents.pt

Luis Ferreira

Founding partner

[email protected]

Luís Ferreira is a qualified European patent attorney with the EPO, a Portuguese patent and trademark attorney and a European trademark and design attorney with the EU Intellectual Property Office (EUIPO). He is also a European patent litigator (University of Strasbourg Centre for International Intellectual Property Studies (CEIPI) patent litigation certificate). He has a degree in electro-technical and lo engineering and an MBA, and is a CEIPI tutor. He specialises in electronics, software and nanotech. He previously worked for an S&P100 company in the United Kingdom, combining his technical and business understanding in information technology and information systems. He has experience as a judicial patent expert, whether appointed by the court or the parties to the case.

Anabela Teixeira de Carvalho

Founding Partner

[email protected]

Anabela Teixeira de Carvalho is a qualified European patent attorney with the EPO and a patent arbitrator in Portuguese mandatory arbitration courts and with ARBITRARE. She is also a Portuguese patent and trademark attorney and a European trademark and design attorney with the EUIPO. She is also a European patent litigator (CEIPI patent litigation certificate). She has a bioengineering degree and is a CEIPI tutor. She helps clients extensively in developing strategies for patent and IP management, namely innovative and defensive patent filings. She has ample experience as a judicial patent expert, whether appointed by the court or the parties to the case.