MACAU SAR Law and Practice Contributed by: João Nuno Riquito, Bruno Almeida, Bernice Kwok and Kimberley Cheong, Riquito Advogados
4.3 Amendments in Revocation/ Cancellation Proceedings
any third party may file a written opposition to the DSEDT regarding the patentability of the pat- ent in question. At the end of this period and once granted, industrial property rights can only be cancelled by the competent courts of Macau (ie, the Court of First Instance) if granted contrary to any of the provisions of the Legal Regime of Industrial Property, and/or contrary to public policy or to accepted principles of morality. The main grounds for dispute are: • if the invention’s title and its subject matter are not related; • if the invention’s abstract has not been described in an adequately clear and thor- ough fashion, so as to allow an expert to implement it; • if the invention’s subject matter is extended beyond the content of the initial application; and/or • if the subject matter of the patent is not new or does not involve an inventive step. The annulment proceedings may be started by any interested party. Intellectual property rights may also be cancelled on grounds of expiry (eg, by virtue of reaching the end of the respective term, lack of payment of annual fees, or waiver by the respective title holder), which can be argued by any interested party. 4.2 Partial Revocation/Cancellation If the grounds for dispute concern only parts of the patent, a partial annulment lawsuit is pos- sible, which may result in a partially valid pat- ent, as long as the remaining claims constitute patentable subject matter in themselves.
Patent holders are allowed to submit a limited number of requests for amendments, including: • until the request for the examination of the patent application is submitted or until DSEDT receives it; • following the submission or receipt of the examination report; or • if submitting a divisional application. Patent holders may only submit such a request once in each of the above-mentioned situations. This amendment includes the means to modi- fy the patent’s title and/or abstract, as well as introducing a short commentary, however, nei- ther should exceed the original contents of the patent application nor extend its original scope of protection. 4.4 Revocation/Cancellation and Infringement Revocation or cancellation and infringement cases are not heard together. As mentioned in 4.1 Reasons and Remedies for Revocation/ Cancellation , patent cancellation may only be issued by the competent courts of Macau, and therefore should be filed before the Court of First Instance, which does not hear applications for infringement. Under Macau SAR law, patent infringement entails a criminal offence, and thus such a claim should be reported to the body responsible for public prosecution (ie, the Ministério Público ), who will open an investigation. See 3.1 Neces- sary Parties to an Action for Infringement for more information.
344 CHAMBERS.COM
Powered by FlippingBook