Legislative Implementation of Flexibilities - Portugal

Title:	Articles 106-110 of the Industrial Property Code, Decree-Law No. 36 of 05/03/2003 as last amended by Law No. 16 of 01/04/2008
Field of IP:	Patents
Type of flexibility:	Compulsory licenses and government use
Summary table:

Provisions of Law

Article 106

Obligation to exploit

1) The patentee is obliged to exploit a patented invention directly or through a person authorised by him and to market the results obtained in order to fulfil the needs of the national market.

2) Exploitation shall begin within four years of the date of the patent application or three years of the grant date, whichever is greater.

3) It is possible to enjoy patent rights with no discrimination as to place of invention, the technological field or the fact that the products are imported from any country belonging to the European Union or WTO or produced locally.

Article 107

Compulsory licences

1) Compulsory licences may be granted for a certain patent, in any of the following cases:

a) Lack or insufficient exploitation of a patented invention;

b) Dependency between patents;

c) Reasons of public interest.

2) Compulsory licences shall be non-exclusive and may only be transferred with the part of the company or establishment that exploits them.

3) Compulsory licences may only be granted if the potential licensee has made efforts to obtain a contractual licence from the patentee on acceptable commercial conditions and said efforts have not been successful within a reasonable period of time.

4) A compulsory licence may be revoked without prejudice to the appropriate protection of the licensees' legitimate interests if and when the circumstances that gave rise to it cease to exist or are not likely to occur again. The competent authority may re-examine the continuation of said circumstances on duly justified request.

5) If a patent concerns semiconductor technology, compulsory licences may only granted for a noncommercial, public purpose.

6) The patentee shall receive appropriate payment in each concrete case on the basis of the economic value of the licence.

7) A decision granting or denying payment is subject to judicial or arbitral appeal under Articles 48 to 50.

Article 108

Licence due to failure to exploit invention

1 - After the time limits referred to in Article 106(2) have expired, a patentee who, without a good reason or legal basis, does not exploit an invention, directly or under licence, or does not do so in such a way as to meet national needs, may be obliged to grant a licence for its exploitation.

2 - A patentee may also be obliged to grant an exploitation licence for an invention if he ceases to exploit it for three consecutive years without a good reason or legal basis.

3 - Objective technical or legal reasons beyond the patentee's control and irrespective of his situation making the exploitation of the invention impossible or insufficient are considered good reason, but not economic or financial difficulties.

4 - For as long as a compulsory licence remains in force, the patentee may not be obliged to grant another before the previous one is cancelled.

5 - A compulsory licence may be cancelled if the licensee does not exploit the invention in such a way as to meet national needs.

Article 109

Dependent licences

1) If it is not possible to exploit a patented invention, without prejudice to the rights conferred by a previous patent, and the two inventions are used for different industrial purposes, a licence may only be granted if the first invention is essential to the exploitation of the second, and only in the part necessary for said exploitation, and the holder of the first patent is entitled to fair compensation.

2) If inventions protected by dependent patents serve the same industrial purpose and a compulsory licence is to be granted, the previous patentee may also demand a compulsory licence for the previous patent.

3) If an invention concerns a process for preparing a chemical, pharmaceutical or food product protected by a current patent, and whenever this process patent represents notable technical progress in relation to the previous patent, both the holder of the process patent and the holder of the product patent are entitled to demand a compulsory licence for the other holder's patent.

4) If the obtainer of a plant variety cannot obtain or exploit a plant securing right without infringing a prior patent, he may request a compulsory licence for nonexclusive exploitation of the invention protected by the patent, provided that this licence is necessary for the exploitation of the same plant variety, on payment of appropriate remuneration.

5) Whenever a licence of the type provided for in the previous paragraph is granted, the patentee is entitled to a reciprocal licence on reasonable terms to use the protected variety.

6) If the holder of a patent for a biotechnological invention is unable to exploit it without infringing a previous plant variety securing right, he may request a compulsory licence for non-exclusive exploitation of the variety protected by the securing right on payment of an appropriate sum.

7) Whenever a licence of the type provided for in the previous paragraph is granted, the holder of the securing right is entitled to a reciprocal licence on reasonable terms to use the protected invention.

8) Applicants for the licences referred to in paragraphs 4 and 6 must prove that:

a) They approached the patentee or plant securing right holder in vain to obtain a contractual licence;

b) The plant variety or invention represents important technical progress of considerable economic interest in relation to the invention claimed in the patent or to the plant variety being protected.

9 - This article also applies whenever one of the inventions is protected by a patent and the other by a utility model.

Article 110

Public Interest

1) A patentee may, in the public interest, be obliged to grant a licence for the exploitation of his invention.

2 ) There are considered to be reasons of public interest if the start, increase or generalisation of the exploitation of the invention, or an improvement in the conditions of its exploitation, is of vital importance to public health or national defence.

3) There are also considered to be reasons of public interest if failure to exploit or insufficient quality or quantity of exploitation is highly detrimental to the country's economic or technological development.

4) The government shall be responsible for granting a licence in the public interest.