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Intellectual Property Newsletter No. 1/2022

ICC and WIPO join forces to empower innovation and entrepreneurship

The International Chamber of Commerce has announced a partnership with the World Intellectual Property Organization, through the development of a tool that will allow business owners who wish to do so to conduct an assessment of their intellectual property assets and main risks, as well as participate in seminars on how to manage their intellectual property assets, research and development results, their trademarks and trade secrets.

This computer tool will allow, through some questions about the business of the entrepreneur, to produce a report in which it is identified which are the main assets of Industrial Property, how they can protect them, manage them and exploit them.

Still with regard to this cooperation, several workshops on intellectual property and innovation in Latin America, Southeast Asia, Africa, Turkey and Europe have been scheduled with the presence of these two entities.

The cooperation between these two entities is a step forward regarding the protection of industrial property rights and can be very relevant for the development and protection of industrial property assets, especially in emerging countries. The availability of tools that allow companies and individuals to immediately know what their main industrial property assets are and what to do to protect them can be central to the protection of trade secrets and the creation of a fair and competitive market.

47 million to help SMEs protect their Intellectual Property

Early this year, the European Commission together with the European Union Intellectual Property Office (EUIPO), launched a new EU Fund for Small and Medium-sized Enterprises (SMEs). This Fund aims to foster the growth of this type of companies by helping them to protect their Intellectual Property rights.

This new European Fund enables support, for the first time, in the protection of Intellectual Property in the form of international patents and trademarks/designs, thus constituting an important aid for SMEs.

The EU Intellectual Property Fund has a budget of EUR 47 million and will provide support in the following areas:

– Reimbursement of fees charged by Member States for pre-screening services for Industrial Property;

– Reimbursement of fees charged by Member States for registration of trademarks and designs;

– Reimbursement of fees charged by the World Intellectual Property Organization for obtaining international protection of mv arks and designs;

– Reimbursement of fees charged by national patent offices in respect of the registration of patents in 2022;

From 2023, other services may be covered, such as partial reimbursement of the costs of prior art search, patent application and private IP consultancy costs charged by IP lawyers.

Law 62/2011 – Actual or imminent infringement not required

The Portuguese Supreme Court of Justice (STJ), in its judgment of 9/12/2021, once again addressed the necessary requirements for filing the special action provided for in Article 3 of Law 62/2011, regarding disputes arising from the invocation of Intellectual property rights related to reference medicines.

At issue was an action filed by the plaintiffs against the defendants so that they refrained from marketing and exploiting, namely manufacturing, offering, storing, introducing into commerce, or holding two medicines developed by the plaintiff, whose active substances were patented at the date of the action.

As the lower court had dismissed the plaintiffs’ claims for lack of allegation and evidence, the plaintiffs filed an appeal per saltum (directly to the STJ), so that the STJ would consider the matter.

In this decision, the Portuguese Supreme Court of Justice ruled that the interpretation of article 3 of Law 62/2011 in the sense that there must be an imminent or effective infringement of the holder’s industrial property right in order for the holder to be able to resort to the special action foreseen in this article is not valid.

The court thus “exposed” the two opposing theses on this issue, ultimately finding that the special action provided for in Law 62/2011 can be filed “as soon as an application for marketing authorization for a generic medicine is published on the INFARMED’s website”. To this end, the court justifies that “in derogation to the general rules, the holders of intellectual property rights do not need to justify resorting to action based on an infringement, current or imminent, or to demonstrate an interest in acting.”

Through this decision, the STJ has thus reinforced this jurisprudential understanding, thus clarifying which requirements must be met in order to resort to this special action foreseen in Article 3 of Law 62/2011.

2021: A record year for EUTM applications

According to EUIPO itself, in 2021 several goals were achieved, but the one that stood out the most was the growing increase in applications for trademark registration, which reached 200,000. To put this growth into context, it took almost 15 years for EUIPO to reach 100,000 applications received in just one year.

This phenomenon demonstrates the growing awareness with regard to the protection of industrial property rights in Europe.  Through the annual reports published by this entity, it is also possible to verify that a large part of the applications is submitted online with 99.96% of the applications being submitted this way.

The registration for subsequent effectiveness of Industrial Property with national and international bodies is increasing, assuming an important role in today’s society. These numbers show us that companies see as increasingly important the protection of their industrial property assets, and although there is still a way to go, the competent authorities have accompanied these concerns.

Portugal, the EU country with the most women inventors

In 2021, and according to the World Intellectual Property Organization, Portugal is the European Union country with the most patent applications submitted by women.

According to this entity, 34% of the patent applications submitted to this entity by Portuguese citizens are women, thus placing Portugal in third place worldwide in terms of countries with more women inventors (only surpassed by Cuba and the Philippines).

This statistic is not surprising if we verify that, according to the most recent study by Eurostat, the European Union Statistics Office, in Portugal more than half of engineers and scientists are women (51%), which places the country ten points above the EU average (41%).

Worldwide, the average number of women inventors is 17%, with several countries in the European Union below this limit, including Germany (11%), Ireland (14%) and Italy (15%). The European Union country at the bottom of the list is Austria with only 8.6%.

In this respect Portugal appears as one of the best countries in the world and the best in the European Union with regard to gender equality in the registration of new inventions. Although there is still some way to go regarding gender equality in this area, Portugal has in recent years taken firm steps towards equality between women and men in this area.

EUIPO and INPI together in support of Ukraine

In view of the current situation in Ukraine, the Portuguese National Institute of Industrial Property, in a statement issued on 18 March 2022, “expressed itself in full solidarity with the Ukrainian people, adopting the following measures:

  • Non-performance of cooperation actions with Rospatent, the Russian Federal Service for Intellectual Property and the Eurasian Patent Organization;
  • Providing all support to users of Ukrainian nationality, and users of other nationalities resident in Ukraine, in safeguarding their Industrial Property Rights (IPR) as long as this situation does not allow the normal and careful management of their rights;
  • Considering, in relation to applicants or right holders of Ukrainian nationality, and of other nationalities residing in Ukraine, that the current conflict, being public and notorious, constitutes grounds for the invocation of Article 8 of the Industrial Property Code (IPC), without the need for additional means of proof”.

In this context, the most relevant measure relates to the express consideration by this Office in the recognition of the direct application of Article 8 of the Industrial Property Code (which deals with the restoration of rights) to all applicants or right holders of Ukrainian nationality and other nationalities residing in that country who have not complied with a deadline whose non-compliance could imply the non-granting or the respective validity of an industrial property right.

Also, the European Union Intellectual Property Office through a statement has decided to extend all deadlines ending between February 24, 2022 and March 31, 2022 until April 1 of the same year to all holders of industrial property rights with Ukrainian nationality or residents in that territory.

Authors:

The content of this information does not constitute any specific legal advice; the latter can only be given when faced with a specific case. Please contact us for any further clarification or information deemed necessary in what concerns the application of the law.

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