MACAU SAR Law and Practice Contributed by: João Nuno Riquito, Bruno Almeida, Bernice Kwok and Kimberley Cheong, Riquito Advogados
ests, a representative or collective action would, in principle, be possible. 2.13 Restrictions on Assertion of an Intellectual Property Right The title holder of an intellectual property right has the exclusive right to use/exploit that right within the Macau Special Administrative Region and to assert it against those who violate it by preventing third parties from manufacturing, offering, stocking, marketing, or using it with- out consent. Although, no opposition can be made to anyone who, in good faith and before the request of the intellectual property certificate was submitted, came to know of the invention by their own means and used it or made effective and serious plans to use it. It should, however, be noted that anyone hoping to benefit from the latter non-contravention provision bears the bur- den of proof in regard to it. 3. Infringement 3.1 Necessary Parties to an Action for Infringement Under Macau SAR law, infringement of IP rights is a criminal offence. Therefore, in order to com- mence infringement proceedings, an infringe- ment claim should be reported before the body responsible for public prosecution ( Ministério Público ), who, in turn, will open an investigation. If, during the investigation, sufficient evidence is collected supporting said infringement claim, the prosecution will bring charges against the infringer. The infringement claim may be reported by any person (or legal entity); however, only the patent owner, licensee(s) (unless otherwise stated with- in the licensing terms), legally constituted busi-
ness associations, and the Consumer Council and consumer associations, legally constituted, may intervene in court. 3.2 Direct and Indirect Infringement Direct infringement occurs when the patent claims granted are violated. Indirect infringement occurs when, without the consent of the rights holder, a person supplies or offers to supply any unauthorised third party with the means, relat- ing to an essential element of that invention, for violating granted patent claims. In both situations (ie, direct or indirect infringe- ment) the patentee, licensees and certain third parties have a claim for injunction and damages. 3.3 Process Patents Process patents are not subjected to particular rules regarding infringement; however, it should be noted that Macau SAR courts shall only have jurisdiction over the alleged infringement if there is some connection between the infringement and Macau SAR. 3.4 Scope of Protection for an Intellectual Property Right The scope of protection of an intellectual prop- erty right is defined by the patents’ claims, which should be interpreted with the aid of its descrip- tion and drawings. Furthermore, in light of the acknowledged dif- ficulty in appreciating the inventive step require- ment, the judicial courts of Macau may turn to the doctrine of equivalents in order to define an objective approach. By means of this doctrine, equivalent infringement is possible, consequent- ly expanding the scope of protection for an intel- lectual property right.
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