Adding Macau to your patent portfolio

João Nuno Riquito and Ricardo Vera-Cruz
[email protected] and [email protected] 

The remarkable economic development of Macau and its status as an international business platform has awakened a general interest in Macau patents. Such interest can be seen in the ever-increasing numbers of patent filing in recent years and the emergence of court litigation regarding patent infringement.

But what do Macau's laws protect with a patent grant What does it demand for such protection And what means are available to protect the rights granted by the patent

Requirements

Macau's patent law is significantly influenced by Portuguese Law, which, in turn, is influenced by European Patent Law. The governing statute of Macau patents is the Industrial Property Law (Regime Jurídico da Propriedade Industrial) (the Law) which was approved by Decree Law 97/99/M, on December 13 1999. It governs not only the concession of Macau patents but also other industrial property rights such as trademarks. Copyright and related rights are governed by a different law (Decree Law 43/99/M).

According to Macau law, only inventions that are considered to be novel, inventive, and industrially applicable can be protected under patent rights.

So, what is an invention, when is it considered to be novel, when does it involve an inventive step and, when can it be considered to be industrially applicable The Law offers no explicit definition of an invention. However, it is possible to derive from certain legal provisions that an invention needs to involve technical content and usefulness. Scholars and comparative jurisprudence often define it as a technical solution for a technical problem. As result, the Law explicitly excludes certain realities from protection under a Macau patent, such as scientific discoveries, theories or mathematical methods, or business and gaming methods. Patentability of computer software is also excluded.

But for an invention to be protected by patent rights, it must be novel, meaning the invention must not exist in prior art. According to the Law, prior art comprises everything that, inside and outside Macau, has been made accessible to the public before the date of the patent application, by description, use, or any other means.

The invention must also involve an inventive step in the sense that, for a person skilled in the art, the result of the invention was not obvious from known prior art. The result must have been reached by a qualitative leap from prior art.

Lastly, the invention must be industrially applicable in the sense that the subject matter can be manufactured or used in any type of industrial or commercial activity. This means that the invention should be able to be executed in a homogeneous and repeatable manner.

Registration procedures

Macau is not a party to the PCT treaty. However, patents granted by the European Patent Office (EPO) under the European Patent Convention and patents granted by the State Intellectual Property Office of the People's Republic of China may be extended to and produce effects in Macau, as if they had been granted in Macau.

The procedure to obtain a Macau patent certificate does not raise any significant specific issues. The application must be submitted in writing in one of Macau's official languages.

The Description shall indicate, briefly and clearly, without reservations or omissions, everything that constitutes the subject matter of the invention, containing a detailed explanation of at least one way of realising the invention, in a way that a person skilled in the art could perform it. Failure to properly disclose the invention is a cause for refusal of the patent and, if granted, for respective nullity.

In the event that the applicant does not have its domicile or head office in Macau, he must appoint a special attorney domiciled in Macau, a Macau Solicitor or industrial property agent.

Legal protection

The patent grants the holder the exclusive right to commercially benefit from the invention in Macau and to oppose any act that implies a breach of such exclusivity. The scope of protection is determined by the claims.

Patent rights in Macau are protected by civil and criminal law. The civil law allows the patent owner to seek injunctive relief, which has the nature of urgent proceedings. However, as injunction procedures are temporary and instrumental, such relief depends on a principal action, where the case will be definitively ruled. The owner is also entitled to seek protection from breaches that have occurred through civil liability. The criminal law establishes the punishment for patent infringement with a fine or a prison sentence of up to two years. Customs has the power to apprehend patent-infringing materials from import or export.

Although it has learned much from similar legal systems such as those of Portugal and other European countries, Macau has had very few patents truly test the local courts. While there are currently only a small number of precedents for reference, it is expected that the next few years will keep the courts busier.