New Industrial Property Code

Author:Mr Ricardo Henriques (PBBR.A)
Profession:Global Advertising Lawyers Alliance (GALA)
 
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The new Portuguese Industrial Property Code was published last 10th December in the Portuguese Official Journal and will be in force as of the 1st July 2019.

However there are two important chapters that will be in force as of 9 January 2019 and 1 January 2019 respectively.

These chapters are related with the following legal aspects:

1) The modification of the Portuguese Law nº 62/2011 regulating through mandatory arbitration the pharmaceutical patent disputes between patentees and generic medicines companies;

2) Trade secrets.

As regard to the modification of the Portuguese Law nº 62/2011 that regulates through mandatory arbitration the pharmaceutical patent disputes between patentees and generic medicines companies we highlight that the new Portuguese Industrial Property Code establishes very important novelties, such as:

A) Disputes are no longer subject to mandatory arbitration;

  1. Arbitral courts shall have the jurisdiction to assess and decide patent invalidity claims limiting inter partes the effects of this decision.

According with the new Portuguese Industrial Property Code as of January 9, 2019 patent disputes between patentees and pharma generic companies concerning alleged patent infringement by new generic medicines shall be decided either by the Intellectual Property Court or by voluntary arbitration.

According with the new law as of January 9, 2019, the patentee has the option to file a lawsuit in the Portuguese IP Court to enforce the patent or to start voluntary arbitration proceedings. Also in the case the parties do not agree to start arbitration proceedings the patentee must file a lawsuit at the Intellectual Property Court to enforce the patent. Therefore the new law returns pharmaceutical patent disputes to the courts after seven years of a mandatory arbitration system.

The second very important amendment introduced by the new law concerning patent disputes between pharmaceutical companies is related with the discussion whether arbitral courts have jurisdiction to decide about patent invalidity or not. This legal question generated great controversy in arbitral courts and judicial...

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