RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q3/PRT/1
12 March 1998
(98-1014)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English/French
REVIEW OF LEGISLATION IN THE FIELDS OF PATENTS, LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS, PROTECTION OF
UNDISCLOSED INFORMATION AND CONTROL OF
ANTI-COMPETITIVE PRACTICES IN
CONTRACTUAL LICENCES
Portugal1
The present document reproduces the questions put to the delegation of Portugal and the
responses given in the review of legislation on patents, layout-designs (topographies) of integrated
circuits, protection of undisclosed information and control of anti-competitive practices in contractual
licences at the Council's meeting of 26-30 May 1997.2
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I. REPLY TO THE GENERAL QUESTION ON PRIORITY RIGHTS3
Does your country recognize a right of priority on the basis of an earlier patent
application filed in any other WTO Member by a national of a WTO Member?
The answer is "yes" (Article 3(4) of the Industrial Property Code).
II. REPLIES TO QUESTIONS POSED BY JAPAN
1. In your country, are the following subject matters protectable by patent:  (1) plants and
animals, and (2) plant and animal varieties?
In Portugal, plant varieties and animal breeds are not protected.
Nevertheless, microbiological process for the production of plants and animals and the
products obtained by these processes are protectable (Article 49-1(b) of the Portuguese law).
                                                     
1As regards laws and regulations relevant to the areas under review and notified by Portugal under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/PRT/1, IP/N/1/PRT/I/1, IP/N/1/PRT/L/1.
2The minutes of the meeting have been circulated in document IP/C/M/13.
3At the meeting of the TRIPS Council of 27 February 1997, Members agreed to respond to this
question in the context of the present review (document IP/C/M/12, paragraph 18).IP/Q3/PRT/1
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2. In your country, is the act of offering for sale included in the exclusive rights of patent?
Yes, Article 96-2 of the Portuguese law includes offering for sale in the exclusive rights of
patent.
3. In your country, what kinds of acts are rec ognized as exceptions to the exclusive rights
conferred by a patent right?
The exceptions conferred by patents can be found in Article 98 of the Portuguese law.
4. In your country, in which case is use wi thout the authorization of the right holder
permitted, including use by the government or by third parties authorized by the government?
Article 105 of the Portuguese law provides for the compulsory licence regime in the
following cases:
- No or inadequate exploitation of the invention;
- export requirements;
- dependent patents;- public interest.
Nevertheless, this compulsory licence regime has no practical application because of the
exhaustion of the right contained in Article 99 of the Portuguese law.
5. In your country, how is the obligation under Articles 34.1 and 34.2 of the TRIPS
Agreement regarding the shift of the burden of proof in civil proceedings for patentinfringement related to a process patent implemented?
Article 93-3 of the Portuguese law provides for the shifting of the burden of proof for
production process patents when the products are new.
III. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
1. Please explain how Portugal has implemente d the obligations of Article 70.2 and 70.7, as
they pertain to Article 33 of the TRIPS Agreement, given that the previous term of protection
under a patent in Portugal was 15 years from the date of grant, rather than 20 years from the
date of filing of the patent application.
Replies concerning the obligations of Articles 70.2 and 70.7 of the TRIPS Agreement as they
pertain to Article 33 have already been given with the notification of the relevant Portugueselegislation (Decree Law No. 141/96 of 23 August).
[Follow-up question from the US]
In response to question No. 1 from the United States, Portugal has provided the text of a
law dated 23 August 1996.  The law provides that all patents that were in force on
1 January 1996 or that derived from an application pending on that date, will have a term thatis the longer of 15 years from grant or 20 years from date of filing.  Could Portugal confirm that
it is their understanding this provision was promulgated by Portugal to comply with the
requirements of Article 70.2 as it relates to Article 33 of the TRIPS Agreement?IP/Q3/PRT/1
Page 3
Further to the reply already given concerning the term of patents in Portugal, we confirm that,
under Decree Law No. 141/96 of 23 August, pate nts, even those which were in force on
1 January 1996, have a term of 20 years from the date of filing.
This provision aligns the Portuguese legislation on the relevant provisions of the TRIPS
Agreement.
2. The Portuguese patent law provides that "programs for computers" are not considered
to be inventions.  Please explain whether, under this provision, inventions within the categories
specified below are not eligible to be patented  under Portuguese law, notwithstanding the fact
that the invention is novel, involves an inventive step, and is useful:
(a) Process inventions which, in whole or in part, consist of steps that are performed
by a computer and are directed by a computer program;
(b) product inventions consisting of elements of a computer-implemented invention,
including in particular:
(i) machine-readable computer program code stored on a tangible medium
such as a floppy disk, computer ha rd drive or computer memory;  and
(ii) a general purpose computer whose novelty over the prior art arises
primarily due to its combination with a specific computer program.
If any of these inventions are not eligible to be patented, please explain how the
Portuguese patent law complies with the obligations of Article 27 of the TRIPS Agreement,
which mandates patent eligibility for all categories of invention without discrimination.
As regards computer programs, it is true that the Portuguese legislation, like the Munich
Convention on the European patent (Article 52.2(c)), do es not consider them to be inventions.  That is
to say, the programs in themselves are not considered to be inventions.
As regards the inventions mentioned in subparagraphs (a) and (b) of question 2 of the
United States, which use programs but whose novelty, inventiveness and capability of industrial
application are inherent in the process or in the products (inventions), they are not eligible to be
patented.
This said, the Portuguese legislation fully complies with Article 27 of the TRIPS Agreement.
3. Please explain whether Portuguese law permits importation to satisfy the condition of
working of a patented invention in consideratio ns relating to issuance of a compulsory licence
for inadequate working of the invention in Portugal.  If not, please explain how Portuguese law
complies with Article 27.1 of the TRIPS Agreeme nt, which prohibits discrimination in the
enjoyment of patent rights based on whether products are produced locally or imported.
This Article must be interpreted jointly with Article 2 of the TRIPS Agreement and
Article 5A of the Paris Convention.
Moreover, Articles 30 and 31 of the TRIPS Agreement should also be taken into
consideration. According to these provisions of the Agreement, national legislation may provide for a
compulsory licence system.IP/Q3/PRT/1
Page 4
From the interpretation of all these provisions it follows that the Portuguese legislation is
consistent with the Article of the TRIPS Agreement.
In fact, the importation of products protected by patents in Portugal but made abroad is not a
reason for patents to be forfeited.
This conclusion is strengthened by the principle of exhaustion of the right in Article 99 of the
Portuguese legislation, according to which the right conferred by the patent does not prevent theimportation of the product after it has been placed on the market by the holder.
[Follow-up question from the US]
In response to question No. 3 from the United States, Portugal has indicated that in
effect, the importation of products protected by a patent in Portugal but made abroad does not
constitute a motive for prejudicing the rights granted under a patent.  The question posed by
the United States was focused on a differen t issue and was not addressed in the answer
provided.  Specifically, it was asked whether importation of a product would be considered tosatisfy the condition for the grant of a compulsory  licence in Portugal.  This question was posed
because Portuguese law appears to provide that  a compulsory licence may be granted on the
justification that the invention was not worked in Portugal.  Accordingly, please confirm that
under Portuguese law, the full enjoyment of patent rights will not be conditioned on whether
products subject to the patents are produced in Portugal or imported.  Please also confirm that
a third party may not request a compulsory licence on the grounds that the patent owner is
importing the product covered by the patent rather than manufacturing them in Portugal.
Despite the fact that the Portuguese legislation provides for a compulsory licence system, it is
not applicable in practice.  In fact, the free move ment of products means that if imports are considered
sufficient to meet the needs of the domestic market, then there is no need to grant compulsorylicences.
The fact that no licence has been requested is evidence of the non-application of the
compulsory licence system.
4. Articles 103, 105 and 106 of the Portuguese Patent Law appear to permit the issuance of
a compulsory licence in situations  where local manufacture of a patented invention fail to satisfy
the export market demands for the patented invention.  Please explain how these provisions of
the Portuguese patent law comply with Article 27.1 of the TRIPS Agreement, and Article 31(f),
which specifies that the use authorized under a compulsory licence be predominantly for the
supply of the domestic market of the Member.
These Articles refer to compulsory licences which correspond to Articles 30 and 31 of the
TRIPS Agreement.
Article 106 is intended to cover a situation of extreme urgency which, if it were to arise,
would require a Government decree.  That is to say it is not a provision that would be automatically
applicable, but rather one which would be considered in the context of a national crisis situation.IP/Q3/PRT/1
Page 5
[Follow-up question from the US]
In response to question No. 4 from the United States, Portugal has indicated that the
authority to order a compulsory licence for the various conditions specified in Articles 103, 105
and 106 will only be exercised in situations where a declaration has been made by the
Portuguese Government that a situation of extreme urgency exists in Portugal (e.g., a national
emergency).  This clarification is very he lpful.  Could the Portuguese Government:
- Further clarify the provision of the Portuguese law that serves as the basis of
their answer, and
- describe a situation where a state of national emergency might justify the
production within Portugal of a patented invention for purposes of satisfying the
export market demand for the product?
The Portuguese law does provide for a compulsory licence to be granted for export needs
(Article 106 of the Portuguese law).
Nevertheless, the same provision requires the Government to publish a decree to enable the
provision to be applied.
The fact that the Government has to publish a decree implies that a state of national
emergency would exist.
5. Please explain how the Portuguese patent law incorporates the obligations of
paragraphs (a) to (l) of Article 31 of the TRIPS Agreement concerning the conditions and
availability of compulsory licences.
Article 105 of the Portuguese law provides for a compulsory licence regime in the following
cases:
(a) Non-exploitation of the patented invention;(b) export requirements (see paragraph 4);
(c) dependent patents;
(d) public interest.
Except for the reasons given in subparagraph (b), with respect to which it is necessary to
consider the situations described in paragraph 4, all the other reasons correspond to Article 31 of theTRIPS Agreement.IP/Q3/PRT/1
Page 6
[Follow-up question from US]
In its answer to question No. 5, the Government of Portugal has indicated that the
conditions governing compulsory licensing specif ied in Article 31(a) to (l) are observed in
Portugal through its conclusion that the Portug uese law corresponds to Article 31 of TRIPS.
The basis for this conclusion is unclear, as no provisions in the Portuguese patent law appear to
impose the various conditions specified in Ar ticle 31.  Could the Portuguese Government:
- Identify the basis in Portuguese law, regulations, administrative practice or
judicial decisions that serves as the ba sis for their conclusion that all of the
criteria governing the granting of compulsory licences are reflected in
Portuguese law;
- explain how these various conditions would be applied in the course of
evaluating an application for a compulsory licence;
- what basis serves to provide the required avenue of judicial review of the
decision to grant a compulsory licence;  and
- how patents for inventions in the field of semiconductor technology are
distinguished from patents for inventions in other fields of technology pursuant
to the distinction of Article 31(c).
Obviously, Article 31 of the TRIPS Agreement "Other use without authorization of the right
holder" encompasses the possibility of granting compulsory licences.
According to subparagraph (b) of that Article, such use may only be permitted if, prior to
such use, the proposed user has made efforts to obtain authorization from the right holder on
reasonable commercial terms and conditions and that such efforts have not been successful within a
reasonable period of time.
However, the formulation of these compulsory licence applications, governed by Article 110
and the following Articles of the Industrial Proper ty Code, including in particular machinery for
mediation by the INPI with a view to reaching agreement between the parties, fully satisfies the
above-mentioned provisions of the TRIPS Agreement.
In connection with compulsory licences, mention should also be made of the regime for
granting dependent licences described in Article 107 of the Industrial Property Code, according to
which:
"If it is not possible to exploit an invention protected by a patent without infringing the rights
conferred by an earlier patent, the holder of the later patent may, at any time, demand the
granting of a compulsory licence on the earlier patent, provided that his invention servesdifferent industrial purposes or represents a significant technical advance in relation to the
subject matter of the first patent."
This provision of the IPC, supplemented by paragraphs 2, 3 and 4 of the same article, is based
on legislative developments at the international level and corresponds to the contents of paragraph 31
of the TRIPS Agreement and Article 47 of the Community Patent Agreement.
Thus, according to subparagraph (l) of Article 31 of the TRIPS Agreement:IP/Q3/PRT/1
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"Where such use is authorized to permit the exploitation of a patent ('the second patent')
which cannot be exploited without infringing another patent ('the first patent'), the following
additional conditions shall apply:
(i) The invention claimed in the second patent shall involve an important technical
advance of considerable economic significance in relation to the invention claimed in
the first patent;
(ii) the owner of the first patent shall be entitled to a cross-licence on reasonable terms to
use the invention claimed in the second patent;  and
(iii) the use authorized in respect of the first patent shall be non-assignable except with the
assignment of the second patent."
Similarly, according to Article 47 of the Community Patent Agreement:
"The legislation of each of the contracting States providing for the granting of compulsory
licences on earlier patents in favour of later dependent patents shall be applicable to therelations between Community patents and national patents as well as to the relations between
Community patents".
Thus, it can be shown that the compulsory licence regime is considered in the TRIPS
Agreement, while Article 2 expressly states that members shall comply with Articles 1 through 12 and
Article 13 of the Paris Convention (1967) and, in fa ct, Article 5-A of that Convention lays down the
rules relating to compulsory licences.
Moreover, the 1989 Community Patent Agreement legally covers the compulsory licence
regime.
Only the terminology used in Article 31 of th e TRIPS Agreement, which refers to "other use
without authorization of the right holder" instead of employing the classical term "compulsorylicences", might suggest, after a cursory reading, that the Agreement does not refer to compulsory
licences, which in fact it does.
To summarize:
1. Articles 105 to 109 of the Portuguese law provide the basis for concluding that all the
provisions of the TRIPS Agreement (Article 31) are mentioned in that law.
2. Articles 110 to 119 of the Portuguese law are regulatory in nature and, where necessary, are
applicable directly.
3. Article 117.6 of the Portuguese law provides for appeal against a decision in accordance with
Article 36 of the same law.
4. Semiconductor product topographies are protec ted by application of Law 16/89 of 30 June
which is aligned on Article 31(c) of the TRIPS Agreement.
6. Please indicate how many compulsory licen ces on a yearly basis have been granted in
Portugal since 1 January 1993.
None.IP/Q3/PRT/1
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7. Please explain the measures, if any, that have been implemented in Portugal to protect
against unfair competition those parties that ha ve provided confidential test or other data
concerning a pharmaceutical or agricultural chemical product to Portuguese regulatory
authorities pursuant to a request for marketing approval.
The protection of undisclosed information is not a question that is dealt with explicitly by the
current IPC.
However, such protection will be provided explicitly in the IPC as part of the improvements
being made.
Meanwhile, it is considered that the main aspects of the protection of undisclosed information
are covered by the provisions against unfa ir competition, Article 260 of the IPC.4
8. Please explain whether Portuguese law conditions the enjoyment of protection in test
data provided to a Portuguese regulatory agency  on the co-existence of patent rights in the
regulated product.  If such a condition is imposed (i.e., the data is protected against disclosure tothird parties only while a patent remains in fo rce covering the product), please explain how the
Portuguese law complies with the requirements of Article 39.3 of the TRIPS Agreement, which
requires WTO Members to prevent use of such da ta in such a fashion as to represent unfair
competition to the party supplying the data and does not condition enjoyment of this protection
on the existence of concurrent patent protection.
See reply to question No. 7 above.
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4The Portuguese delegation has indicated that this reply also applies to question No. 8 from the
United States.