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16 April 2015
The legal IP regime in Macau is governed by the Industrial Property Act, embodied in Decree-Law 97/99/M (December 13 1999). The act superseded the Industrial Property Code 1995, which was a Portuguese law that had been applicable in Macau until the new act entered into force. Under this regime, IP rights give rights holders full and exclusive enjoyment, use and disposal of their inventions, creations and distinctive signs within the limits, conditions and restrictions established by law.
As a member of the World Trade Organisation, Macau is requiredto introduce the appropriate legal mechanisms to protect IP rights. The Paris Convention for the Protection of the Industrial Property has been applicable in Macau since August 12 1999.
One of the IP rights conferred by the act is the protection of inventions, their patentability subject to novelty tests, inventiveness and industrial applicability. An invention is considered novel when it is not included in state of the art, which comprises everything inside or outside Macau that was made available to the public before the date of the patent application. An invention involves inventiveness, for a professional in the relevant industry, if it is not evident from the state of the art. Finally, an invention is susceptible to industrial applicability if its object can be made or used in any type of business.
A patent application must be filed in one of the official languages of Macau (Chinese and Portuguese) with all necessary information, including:
The applicant must submit:
A simple idea for a new invention is not protected by patent rights. In order to apply for a registered patent, the applicant must include sufficient technical information in the application so that any person in the relevant business can implement the patent accordingly.
There are two examination phases: formal and material. After receiving the application, the Macau Economic Services conduct a formal examination to ascertain if all required elements have been submitted. The material examination is made by the National Intellectual Property Department of the People's Republic of China, pursuant to Chief Executive Order 59/2004.
The examination phase may also help the applicant to evaluate the patent's value, with the applicant being able and entitled to decide to withdraw the application or obtain the registered patent certificate based on the results of the patent search and patent examination report.
Eighteen months after the application has been submitted, the Macau Economic Services will publish a disclosure notice in the Official Gazette. From this point and up to the date when the patent is granted, any person may submit a written complaint regarding the patentability of the invention included in the application.
The complaints are forwarded to the applicant, and the applicant has four months within which to reply.
A patent will be rejected if:
The rights holder will receive a registration certificate once the right is granted by the Macau Economic Services.
A valid patent grants its holder the exclusive right to exploit the invention in Macau. Moreover, the patent gives its holder the right to oppose any acts that constitute patent infringement, including preventing third parties from manufacturing, supplying, storing, trading or using a patented product or importing or owning that product for any of the purposes mentioned without rights holder's consent. The scope of patent protection is determined by the content of its claims, which are interpreted according to the description and drawings.
For registered patents, protection lasts for 20 years from the date of application. An applicant which holds a valid Macau Resident Identity Card or is a company incorporated or registered in Macau can perform the application itself or by appointing a proxy. Otherwise, the applicant can appoint one of the following to file the application on its behalf:
Macau's patent registration system is territorial; thus, in order to obtain patent protection in Macau, an applicant must submit the application locally, despite the fact that the patent has been registered in a foreign country. During the patent's life, its holder can use the words 'patented', 'patent no' or 'Pat No' for its products.
The Industrial Property Act also provides for utility patents, which grant protection to inventions that give an object a configuration, structure, mechanism or layout which increases the object's utility or improves its use. Utility patents are subject to the same patentability requirements as invention patents, depending on its nature. A utility patent invention may also be subject to an application as an invention patent. A utility patent's effects come to an end when an invention patent related to the same invention is granted. The duration of its protection is 10 years from the date of application.
Patent infringement may lead to both civil and criminal responsibility. The Industrial Property Act establishes criminal consequences to those which, without consent of the rights holder:
The number of patent applications has been growing in line with the growth of Macau's economy, reflecting the awareness of market actors to protect their innovations.
As the number of patent disputes is increasing, and is likely to continue increasing, there remain many ways to improve Macau's IP regime (including mechanisms to seek compensation for patent infringement). Macau courts would therefore benefit from having a more specialised team, including IP experts capable of conducting necessary examinations and issuing specialised reports.
For further information on this topic please contact Pedro Cortés or Marta Mourão at Rato Ling Vong Lei & Cortés Advogados by telephone (+853 2856 2322) or email (email@example.com or firstname.lastname@example.org). The Rato Ling Vong Lei & Cortés Advogados website can be accessed at www.lektou.com.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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