MACAU SAR Law and Practice Contributed by: João Nuno Riquito, Bruno Almeida, Bernice Kwok and Kimberley Cheong, Riquito Advogados
3.5 Defences Against Infringement According to Macau SAR law, intellectual prop- erty rights are normally granted to the person (or entity) that first filed the invention, and thus benefit a party with prior-use rights. Such rights may also be claimed by someone who uses any unregistered trade mark within a period of time not exceeding six months. As a general rule, patent exhaustion is also appli- cable to all intellectual property rights, meaning that any non-authorised for-profit manufactur- ing, supplying, storing, importing, or use of a product covered by a patent, or its importation or possession for any of these purposes, are prohibited. Lack or insufficiency of use is grounds for apply- ing for a compulsory licence if the rights holder, without good reason or legal basis, after a period of four years from the date of patent application or three years from the date of patent granting, has not put the invention into (sufficient) effect. 3.6 Role of Experts In annulment and infringement proceedings, both parties may request the intervention of a court-appointed expert, who plays a very impor- tant role with regard to technical inventions. Each party may suggest experts, while the opposing one may challenge or suggest some- one different or more suitable. The court will appoint the expert(s) after hearing the opinions of both parties. Once appointed, court experts must diligently perform their duties by providing the judge with a report that addresses the queries raised by the parties and/or by the judge. When ruling on the case, the judge freely assesses the evidence and is thus not bound by the reports’ findings.
Where a compulsory licence application is approved, the DSEDT and all parties involved shall each appoint an expert to determine the conditions of the licence and the remuneration to be paid to the patent holder. 3.7 Procedure for Construing the Terms of the Patent’s Claim Under Macau SAR law, a specific procedure for construing the terms of the patent’s claims is not required; however, the judge may request the parties to address specific aspects regarding validity and infringement. 3.8 Procedure for Third-Party Opinions The court and/or any of the parties may select a subject or matter which they feel requires expert opinion or guidance due to its highly special- ised nature and request that such expertise be provided, for the purpose of which one or more experts will be appointed. In this event, although the expert’s report is produced out of court and delivered before the trial, the expert may then be called to testify before the court regarding any question or request for clarification arising from his or her report. In certain circumstances, the court may order the production of a second expert opinion.
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
Intellectual property rights can be disputed either by opposition (in the administrative stage of the registration procedure) or by an annulment lawsuit. Within the period of publication of the disclosure notice, until the date of granting of the patent,
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