New Spanish Patent Act

On 1 April, the new Spanish Patent Act (Law 24/2015 of 24 July) entered into force, replacing the current Patent Act of 1986 and introducing a number of new features, some of which are highlighted below:
Patents

  • The current “General Grant Procedure” (without an examination) is abolished and a single grant procedure is established, with a substantive examination of patentability that includes an examination of novelty and inventive step.
  • Payment of the fee for preparing the prior art report is moved forward to the time of filing the patent. It is thus obtained before the result of the background search and the examiner’s initial opinion, providing the applicant with the necessary information for deciding whether to maintain its application and/or to patent abroad within the priority period.
  • The procedure for opposition by third parties against the grant of the patent will now take place post-grant. The period for the filing of oppositions is six months from the publication of the grant of the patent in the Spanish Official Intellectual Property Gazette (Boletín Oficial de la Propriedad Industrial, BOPI).
  • The concept of the “patent of addition” is also removed, which in Law 11/1986 allowed the addition of embodiments or refinements to a patent that had been granted and was in force, without the need to comply with the requirement of inventive step. This option does not exist under the new law.

 

Utility Models

  • The novelty required for the valid grant of a utility model will be the same as that required for a patent (absolute novelty as opposed to the “national novelty” of the former law, Law 11/86). However, the requirement for a reduced level of inventive step as compared with patents has been maintained.
  • The scope of protection of utility models is expanded. Products or compositions are included as inventions that can be protected by means of a utility model, but inventions relating to biological material and pharmaceutical compositions and substances are excluded. The exclusion relating to process inventions is maintained.
  • The processing of a utility model application does not include a background search or a substantive examination of patentability. However, for the bringing of actions relating to exclusive rights deriving from a utility model, a prior art report will have to be obtained or requested in advance. This is the same prior art report as is prepared by the Spanish Patent and Trademark Office (SPTO) for patent applications. The prior art report prepared will be public.

 

Common provisions for patents and utility models

  • It is established that inventions developed in Spain must compulsorily be filed at the SPTO. If the applicant has its domicile, registered office or habitual residence in Spain, it will be assumed, unless proof to the contrary is submitted, that the invention was developed on Spanish territory. In the event of failure to comply with this obligation, the patent will have no effect in Spain.
  • The proprietor of a granted patent may voluntarily request, before the SPTO, at any time in the legal lifetime of said patent, that the patent be revoked or limited, by amending the claims.
  • The new law removes the prohibition on declaring a claim to be partially invalid.
  • Explicit mention is made of technical equivalents when determining the scope of protection conferred by a patent.
  • The process for the awarding of the compulsory licences that may be requested when the exploitation of the patent has been interrupted by more than a year (in Law 11/1986 this period was three years) is simplified. The parties may appoint a common mediator or each appoint an expert. In the event of a lack of agreement between the parties, the SPTO shall rule on the awarding of the licence.
  • For entrepreneurs considered to be a natural person or small or medium-sized enterprise (SME), a discount of 50% is applied to the following annuities and fees: filing fee, fee for requesting the prior art report, fee for substantive examination and third, fourth and fifth annuities.
  • The conditions governing the relationship between employee and employer in the case of service inventions (inventions developed in the context of an employment or service relationship) and in the case of inventions developed by research staff at public universities and public research bodies are being regulated in greater detail.
  • Express mention is made of the option for parties in litigation to resort to mediation or arbitration. This excludes matters relating to grant procedures, opposition proceedings and appeals where the subject of the dispute concerns compliance with the requirements for the granting, maintenance or validity of a title. The SPTO is assigned the role of mediation and arbitration institution.

 

Supplementary protection certificates

  • Supplementary protection certificates for drugs and phytosanitary products are explicitly included among the titles regulated by the Patent Act.

 

Procedural rules

  • New procedural rules are introduced in relation to the limitation of a patent in the context of judicial proceedings. Thus, the patent proprietor can defend the validity of the patent in the form in which it was granted and/or in a restricted form.
  • The new law introduces preventive letters into the Spanish procedural system. Accordingly, any person that expects to be the subject of a request for precautionary measures without a hearing of the party will be able to file a preventive letter explaining why the precautionary measures should not be granted. The filing of the preventive letter will be notified to the patent proprietor.
  • With the new law, only those Commercial Courts that have been assigned exclusive jurisdiction to hear patent cases will be competent to hear patent cases (new Patent Courts).
    Although the Spanish Code of Civil Procedure establishes a general period of 20 days to respond to a suit, as from notification thereof, the new Patent Act extends that period to 2 months for patent litigation.
  • In relation to damages, the new law clarifies that the patent proprietor can choose between the profit that it has lost and the profit of the respondent. Coercive compensation is also established in order to ensure the cessation of the infringing activity.
  • The new Patent Act will make it possible, in cases where the validity of the patent is disputed, to request the Spanish Patent and Trade Mark Office (SPTO) to issue a report on the aspects on which the parties’ experts contradict one another.