Source: EURLEX
Language: en
Format: md

[JURE summary](#SM)

## JURE summary

I - The C.P.I. (1) submitted the resolution of disputes arising from intellectual property rights regarding brand name medications and generic medications to mandatory arbitration.

II - The legislator intended, with this regime, to create a mechanism through which a decision on the merit of the case could be obtained in a short timeframe, as to whether or not the industrial property rights pertaining to such medications had been violated, and excluded, as a principle, state courts from ruling on these disputes.

III - The matter has arisen of whether or not the arbitration tribunal has the jurisdiction to rule on the validity/nullity of a duly registered patent regarding which one of the parties has invoked the existence of industrial property rights that are incompatible with the marketing authorisation of the generic medication.

IV - Two opposing opinions have emerged, both in jurisprudence, and in doctrine, one restrictive, the other more encompassing and broader. The matter was appreciated by the Supreme Court, for the first time, in its judgment dated 14. 12. 2016, which followed the first opinion, because it considered that allowing the parties to invoke the nullity of the patent as a procedural incident would imply an indisputable dysfunction.

V - Without prejudice to the value of each of the opposing opinions, this court considers, in line with the judgment mentioned in point IV, that the opinion which is better suited to the purposes and interests in this dispute, according to the elements of legal interpretation which should prevail (Article 9 of the CC (2)), is the opinion which supports that it is inadmissible for the mandatory arbitration tribunal to rule on the validity of the patent as a mere procedural incident, even if the ruling is only effective among the parties.

VI - The reasoning used by the Supreme Court remains valid, whereby it sustained that, since there is no doubt that Article 35(1) of the CPI attributes exclusive material jurisdiction to the TPI (3) regarding the declaration of nullity or annulment of patents, with effects *erga omnes*, the best solution would be to deny jurisdiction of the mandatory arbitration tribunal to formulate this judgement of validity or invalidity, even if invoked as a mere incident, with effects limited to the case.

VII - Regardless of the value of the arguments contained in the judgment of the Constitutional Court dated 24-05-2017 - which concluded, in the only ruling, so far, on this matter, that the interpretation which prevents the arbitration tribunal from ruling, after it is incidentally invoked, on a patent's validity or invalidity, is unconstitutional - we consider that the solution set forth, as per the justification expressed in the Supreme Court Ruling mentioned in point IV, with which we agree, does not disproportionately restrict the right of the defence of the holder of the marketing authorisation, since a court action to declare nullity or to annul is still available as an alternative form of effectively satisfying the need for defence of the applicant for a marketing authorisation.

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(1) Código de Propriedade Industrial (Industrial Property Code, Law 62/2011, of 12/12).

(2) Código Civil (Civil Code).

(3) Tribunal da Propriedade Industrial (Industrial Property Court).

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