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Five years on the provisional patent application in Portugal is a success

On 1st October this year the last review on the Industrial Property Code (IPC) in Portugal completes 5 years since its entry into force.
The amendments carried out in the review with regards to patents aimed at closing the gap to the European system, the simplification of procedures and more importantly the introduction of the provisional patent application.

Over the last 12 years in Portugal the number of applications through national route significantly increased, despite figures are still very low when compared to the European average per million inhabitants, with substantial growth since 2006 nevertheless. Over the last four years provisional patent applications have steadily grown and it currently represents already over 50% of total requests (57% in 2012). The amount of provisional patent applications is higher than the number of requests that ocurred annually up to 2006 and it is forecast to continue to grow as the method of choice among the national routes.

Figure 1 – Total of applications of inventions through national route in Portugal (note: the value of provisional applications is depicted in the green curve, and is also included in the black curve with the total of applications). Source: INPI (Portuguese Institute of Industrial Property)

Under Article 62.º of IPC the provisional patent application involves two phases: the request, under the point A, which ensures the priority date in an expeditious manner and at low cost and phase B that corresponds to its conversion into a definitive patent application.

National Legislation defines that the text to be submitted in phase A should be presented in either Portuguese or English, having already been accepted in Portugal cases where the text was presented partly in Portuguese and English.

The conversion phase B may or may not occur, regardless of such act, for those applications which have been accorded a date of filing in phase A, serves for claiming a right of priority, i.e. it is possible to obtain the required official certificate necessary for subsequent applications.

Despite the obvious advantages of this modality we point out that if a provisional patent application where the technical substance is insufficient, ill-defined or in extreme cases absent, will bring difficulties that might affect the course of the process itself. In these situations, at the time of conversion or of submission of subsequent applications, the right for claiming priority might be lost in whole or in part and intermediate publications that might have occurred might also withdraw novelty to the request.

Another feature which contributed to the success of provisional patent applications in Portugal concerns the possibility of requiring a search report on the state of the art. However it should be noted that according to the usual practice of national examiners whenever it is considered there is not enough substance and/or not properly described, even though payment for research has already been made, they do not perform this. In this context, the applicant will not have available the report for decision making in the follow-up process as well as there will not be place for fee refund.

With the aim to prevent or at least to reduce the possibility of such occurrences so that the search report and opinion of the examiner contains concrete information about the potential patentability of the application under consideration we recommend the use of specialized advice.

Professionals in the area of patents are suitably prepared to carry out the analysis of inventions, drafting and review of the description and, if possible, they ensure that the provisional application is submitted with claims, or at least with sufficiency of description, as defined in paragragh 4 of Article. 62.º of the national legistation, as well as in Article. 83.º of the European Patent Convention. The law in force defines that the application shall disclose the invention in a manner sufficiently clear and complete, without reservations or omissions, with detailed explanations for it to be carried out by a person skilled in the art.

As a result of poorly drafted applications that might include amendments in later stages should be considered as containing additional technical substance, being this criteria under Article 123.º paragragh 2 of the European Patent Convention even more restricted as to the amendments allowed on the basis of the text originally filed. Decisions of the Enlarged Board of Appeal of the European Patent in this field, such as the G2/98 and more recent practices as well restrict the concept of the same invention only to those amendments where the person skilled in the art determines the technical substance of the claims straightforward and not ambiguously, using common general knowledge, and not more than that, from the application field.

In conclusion the use of provisional patent applications is of much interest provided that the above indicated aspects regarding the proper drafting of texts are duly considered.

Carmen Sánchez-Puelles