Transfer of IP rights in Portugal

  1. Patents: Assignment
    1. 1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 
    2. 2. Which formalities must be met to record a patent assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the patent assignment? Does the record in the patent register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the patent is held by more than one proprietor? 
    5. 5. Is there a need to appoint a domestic professional representative?
    6. 6. Which official fees (if any) arise from recording a patent assignment?
  2. Patents: Licensing
    1. 7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 
    2. 8. Which formalities must be met to record a patent licence? Which supporting documents are required?
    3. 9. What are the legal consequences of not recording the patent licence? Does the record in the patent register have declarative or constitutive effect?
    4. 10. Is there a need to appoint a domestic professional representative?
    5. 11. Which official fees (if any) arise from recording a patent licence?
  3. Patents: Pledge
    1. 12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?
  4. Trademarks: Assignment
    1. 1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 
    2. 2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the trademark assignment? Does the record in the trademark register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the trademark is held by more than one proprietor? 
    5. 5. Are there specific formalities in case a trademark is only partially assigned? 
    6. 6. Is there a need to appoint a domestic professional representative?
    7. 7. Which official fees (if any) arise from recording a trademark assignment?
  5. Trademark: Licensing
    1. 8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 
    2. 9. Which formalities must be met to record a trademark licence? Which supporting documents are required?
    3. 10. What are the legal consequences of not recording the trademark licence? Does the record in the trademark register have declarative or constitutive effect? 
    4. 11. Are there specific formalities in case a trademark is only partially licenced? 
    5. 12. Is there a need to appoint a domestic professional representative?
    6. 13. Which official fees (if any) arise from recording a trademark license?
  6. Trademark: Pledge
    1. 14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Patents: Assignment

1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 

A patent may be assigned by an agreement on the transfer of rights, inheritance, a court or administrative decision. 

Yes. Recording the assignment in the national patent register (Portuguese PTO) is required for it to become effective, namely before third parties.

2. Which formalities must be met to record a patent assignment? Which supporting documents are required?

To record a patent assignment it is necessary to file an application before the Portuguese PTO on behalf of the assignee. The application should be filed together with a document attesting the assignment, namely an assignment deed or an official document.

2.1 Are original supporting documents essential or are copies sufficient?

Submission of a certified copy of the supporting document is sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

The supporting document should be notarized, legalized and further translated into Portuguese.

2.3 Is there a must to use a specific form?

Besides the form of the Portuguese PTO, there is no specific form to be used.

Please note that if the recordal of the assignment is filed by the assignor, the assignee must also sign the document evidencing the assignment or make a statement accepting the assignment.

The patent assignment only produces effects in relation to third parties after the date of the respective recordal with the Portuguese PTO. In other words, the patent assignment not recorded with the Portuguese PTO only takes effect between the parties themselves or their successors. 

Having in mind the above, the record in the Portuguese PTO has constitutive effect in relation to third parties and declarative effect in relation to the  parties themselves or their successors.

4. Are there specific formalities in case the patent is held by more than one proprietor? 

In cases where the patent right belongs to more than one proprietor and the assignment is requested by only one or some of them, the remaining proprietors must present their express consent by means of a declaration of consent of the act bearing their signatures.

5. Is there a need to appoint a domestic professional representative?

If the applicant or owner has its place of residence or seat in Portugal, there is no need to appoint a professional representative in Portugal.

If the applicant or owner has its place of residence or seat outside Portugal, it does not require a domestic representative, but must appoint an address in Portugal or an email contact or fax number for communications with  the Portuguese PTO.

6. Which official fees (if any) arise from recording a patent assignment?

EUR 107,86 per application.

Patents: Licensing

7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 

In general, there are exclusive and non-exclusive licenses, as well as compulsory licences. All of these can be recorded with the Portuguese PTO.

The licensing of patents rights becomes effective when the contract is concluded between the parties. 
Vis-à-vis third parties, the licence rights becomes effective when the license is recorded with the Portuguese PTO. 
Please note that if the license has not yet been recorded with the Portuguese PTO, the owner of a license cannot take legal action against third parties concerning possible patent infringements.

8. Which formalities must be met to record a patent licence? Which supporting documents are required?

Either a written application or court order is sufficient. The license agreement must be enclosed. 

8.1 Are original supporting documents essential or are copies sufficient?

Submission of a certified copy of the license agreement is sufficient. 

8.2 Are there any legalization and/or notarization and/or translation requirements?

The license agreement should be notarized, legalized and further translated into Portuguese.

8.3 Is there a must to use a specific form?

Besides the form of the Portuguese PTO, there is no specific form to be used .

The patent license only produces effects in relation to third parties after the date of the respective recordal with the Portuguese PTO. In other words, the patent license not recorded with the Portuguese PTO only takes effect between the parties themselves or their successors. 

Having in mind the above, the record in the Portuguese PTO has constitutive effect in relation to third parties and declarative effect in relation to the  parties themselves or their successors.

10. Is there a need to appoint a domestic professional representative?

If the applicant or owner has its place of residence or seat in Portugal, there is no need to appoint a professional representative in Portugal.

If the applicant or owner has its place of residence or seat outside Portugal, it does not require a domestic representative, but must appoint an address in Portugal or an email contact or fax number for communications with the Portuguese PTO .

11. Which official fees (if any) arise from recording a patent licence?

EUR 91,67 per application.

Patents: Pledge

12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?

Yes, patents can be pledged.

For the pledge to become effective, the pledge document must be submitted, and the pledge must be entered in the Portuguese PTO.

Pledges on patent rights become effective against third parties upon entry in the patent register.

Trademarks: Assignment

1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 

A trademark may be assigned by an agreement on the transfer of rights, inheritance, a court or administrative decision.
Yes Recording the assignment with the Portuguese PTO is required for it to become effective, namely before third parties.

2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?

To record a trademark assignment it is necessary to file an application before the Portuguese PTO on behalf of the assignee. The application should be filed together with a document attesting the assignment, namely an assignment deed or an official document.

2.1 Are original supporting documents essential or are copies sufficient? 

Submission of a certified copy of the supporting document is sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

The supporting document should be notarized, legalized and further translated into Portuguese.

2.3 Is there a must to use a specific form?

Besides the form of the Portuguese PTO, there is no specific form to be used.

Please note that if the recordal of the assignment is filed by the assignor, the assignee must also sign the document evidencing the assignment or make a statement accepting the assignment.

The trademark assignment only produces effects in relation to third parties after the date of the respective recordal with the Portuguese PTO. In other words, the trademark assignment not recorded with the Portuguese PTO only takes effect between the parties themselves or their successors. 

Having in mind the above, the record in the Portuguese PTO has constitutive effect in relation to third parties and declarative effect in relation to the  parties themselves or their successors.

4. Are there specific formalities in case the trademark is held by more than one proprietor? 

In cases where the trademark right belongs to more than one proprietor and the transfer is requested by only one or some of them, the remaining proprietors must present their express consent by means of a declaration of consent of the act bearing their signatures.

5. Are there specific formalities in case a trademark is only partially assigned? 

Whenever an assignment concerns only part of the protected object (trademark), the applicant must unequivocally distinguish the part that must remain in the original register from the part that becomes part of the register resulting from the partial assignment.

In the event of a partial assignment of the application or registration, the document of assignment shall clearly reflect that claim, identifying the part of the application or right that is assigned and who retains ownership of it.

6. Is there a need to appoint a domestic professional representative?

If the applicant or owner has its place of residence or seat in Portugal, there is no need to appoint a professional representative in Portugal.

If the applicant or owner has its place of residence or seat outside Portugal, it does not require a domestic representative, but must appoint an address in Portugal or an email contact or fax number for  communications with the Portuguese PTO.

7. Which official fees (if any) arise from recording a trademark assignment?

EUR 107,86 per application.

Trademark: Licensing

8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 

In general, a trademark can be the subject of exclusive or non-exclusive licenses for all or part of the goods or services for which it is registered and for all or part of Portugal.

The licensing of trademarks rights becomes effective when the contract is concluded between the parties. 
Vis-à-vis third parties, the license rights only become effective upon recording the license in the trademark register.

9. Which formalities must be met to record a trademark licence? Which supporting documents are required?

Either a written application or court order is sufficient. The license agreement must be enclosed.

9.1 Are original supporting documents essential or are copies sufficient? 

Submission of a certified copy of the license agreement is sufficient. 

9.2 Are there any legalization and/or notarization and/or translation requirements?

The license agreement should be notarized, legalized and further translated into Portuguese.

9.3 Is there a must to use a specific form?

Besides the form of the Portuguese PTO, there is no specific form to be used.

The trademark license only produces effects in relation to third parties after the date of the respective recordal with the Portuguese PTO. In other words, the trademark license not recorded with the Portuguese PTO only takes effect between the parties themselves or their successors. 

Having in mind the above, the record in the Portuguese PTO has constitutive effect in relation to third parties and declarative effect in relation to the  parties themselves or their successors.

11. Are there specific formalities in case a trademark is only partially licenced? 

The license agreement must specify the goods and services for which the trademark is licensed.

12. Is there a need to appoint a domestic professional representative?

If the applicant or owner has its place of residence or seat in Portugal, there is no need to appoint a professional representative in Portugal.

If the applicant or owner has its place of residence or seat outside Portugal, it does not require a domestic representative, but must appoint an address in Portugal or an email contact or fax number for communications with  the Portuguese PTO.

13. Which official fees (if any) arise from recording a trademark license?

EUR 91,67 per application.

Trademark: Pledge

14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Yes, trademarks can be pledged.

For the pledge to become effective, the pledge document must be submitted, and the pledge must be entered in the patent register.

Pledges on trademark rights become effective against third parties upon entry in the patent register.

Portrait ofJoão Leitão Figueiredo
João Leitão Figueiredo
Partner
Lisbon
Portrait ofMiguel Quintans
Miguel Quintans
Counsel
Lisbon
Diogo Frada de Almeida