Patents of Invention and Utility Models
Legal Basis
– Patents Act 24/2015 of July 25, 2015, published in the Official State Gazette No. 177 of July 25, 2015, and in force since April 1, 2017. Applications for patents and utility models filed before the effective date of this Law, will be prosecuted and decided on, pursuant to the legal provisions in force at the time they were filed, that is, the Patents Act 11/1986.
– Implementing Regulations were promulgated by Royal Decree 316/2017 of April 1, 2017.
– The Spanish Patent and Trademark Office, is regulated by the Law of May 2, 1975, supplemented by the Regulations approved by Royal Decree 1270 of July 24, 1997.
– Article 273 of the Criminal Code of November 23, 1995.
– Act 19/2006 of June 2006, expanding measures for enforcement of intellectual and industrial property rights and establishing rules of procedure to enable application of several Community regulations.
– Act 2/2011 of March 4, 2011 on the sustainable economy intended to improve the Spanish government’s investments in research, development and innovation.
– Act 14/2011 of June 1, 2011 on science, technology and innovation.
– Royal Decree 1431/2008 of August 29, 2008 amending certain regulatory provisions relating to industrial property and concerning some other legal provisions in industrial property matters.
– Decision of the Director of the Spanish Patent and Trademark Office, of February 6, 2019, approving the Guidelines for Examination of applications for patents, utility models, topographies of semiconductor products and industrial designs of the Spanish Patent and Trademark Office.
IP Developments: The new Patents Act 24/2015 of July 24, 2015, which entered into force on April 1, 2017, has brought the following main changes:
– Amendment of the grant procedure. There is a single granting procedure comprising compulsory substantive examination of novelty, inventive step and industrial applicability.
– Supplementary Protection Certificates (SCPs) are specifically included among the protectable rights.
– The scope of protection of utility models (inventions of a lower order) is extended to non-pharmaceutical chemical substances.
– The employees’ inventions regulatory framework is clarified so as to simplify the procedure and improve legal certainty.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act of July 14, 1967, in force since 1974.
– Strasbourg Agreement Concerning the International Patent Classification, since November 29, 1975.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 25, 1978.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since March 19, 1981.
– European Convention of December 11, 1953, on formalities required for patent applications.
– Convention on the Grant of European Patents (European Patent Convention), since October 1, 1986; the Act revising Article 63 came into force on July 4, 1997. The Act revised by the Diplomatic Conference in November 2000 came into force on December 13, 2007.
– Patent Cooperation Treaty (PCT), Chapter I, since November 16, 1989, Chapter II, since September 6, 1997.
– WTO’s TRIPS Agreement, in force since January 1, 1996.
– Patent Law Treaty, since November 6, 2013.
Filing
Applicant: the inventor, his assignees or successors.
Foreigners not resident in a member State of the European Union: may apply for patents and utility models, but must appoint a Spanish patent agent, except to file application for purposes of obtaining a filing date, pay fees, or submit a copy of an application already filed.
Residents of a member State of the European Union: may act for themselves, but if they do not have an address or business office in the territory of Spain, they must designate a mailing address in Spain for notification purposes, or, alternatively, indicate that all notifications be sent to them by e-mail or another means of communication available at the Spanish Patent and Trademark Office.
Protection of foreigners: they may apply for patents and utility models if they are entitled to benefit from the Paris Union Convention or are nationals of a country with which there is a convention on reciprocity. Nationals of member countries of the World Trade Organization may also apply for patents.
Naming of inventor(s): the inventor must be named in the patent application; he may demand that he be mentioned as such in the patent when he has assigned his rights and is not the applicant himself.
Notion of the invention: the Law does not define the concept of invention, but it delimits this by indicating that the following shall not be regarded as inventions: (a) discoveries, scientific theories and mathematical methods; (b) literary or artistic and scientific works; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and computer programs; (d) forms of presentation of information; (e) methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods.
Types of patents: (1) patents of invention: these confer on their proprietors the right to prevent third parties not having their consent from manufacturing, importing, offering on the market, using or facilitating use by others of the product or process that is the subject matter of the patent or the substance obtained directly by that process, except when such acts are carried out in a private sphere for non-commercial or experimental purposes. This right does not extend to acts performed in Spain in relation to a product covered by a patent after that product has been put on the market by the proprietor of the patent or with his express consent (exhaustion of the right); (2) utility models: this type of protection is available for inventions which consist of giving a form, structure, composition or constitution to an object so as to give rise to some substantially practical advantage in its use or manufacture. Utility models afford the same rights as patents of invention, but have a lower term (ten years); (3) supplementary protection certificates for medicinal and plant protection products.
Patentability: new inventions, which involve an inventive step and are susceptible of industrial application are patentable. Chemical or pharmaceutical substances are patentable.
Exceptions to protection: that which is not regarded as an invention (see earlier) and inventions whose publication or exploitation would be contrary to public order or morality; plant varieties, animal varieties and essentially biological processes for the production of plants or animals; however, microbiological processes are patentable.
Novelty: an invention is considered to be new if it is not comprised in the state of the art (formed by everything which, before the filing date of the patent application, had been made available to the public in Spain or abroad, or is contained in earlier Spanish patent or utility model applications).
Novelty grace period: Spanish law makes no provision for a grace period.
Inventive step: this is present in an invention if, having regard to the state of the art, it is not obvious to a person skilled in the art.
Priorities: in accordance with the Paris Convention, priority may be claimed from the first application for the same subject matter. Also, multiple priorities may be claimed for the same application and, where applicable, for the same claim in the Spanish patent, even if they originate in different countries. If multiple priorities are claimed, time limits running from the priority date will be counted from the earliest priority date.
Territory covered: the entire Spanish peninsula, Balearic Islands, Canary Islands and the territories of Ceuta and Melilla.
Filing requirements for an application (to be sent to resident agent):
For patents of invention:
1. A request addressed to the Director of the Spanish Patent Office appropriately identifying the applicant and furnishing contact details, according to an official form;
2. A description of the invention with one or more claims and an abstract;
3. Drawings;
4. A statement indicating how the applicant acquired the right to the patent, where the inventor is not the applicant;
5. If Convention priority is claimed: in the patent application a declaration of priority must be made, stating, at least, the date and the country; and submission of a certified copy of the priority application issued by the Patent Office of the home country. The Office may require the later submission of a Spanish translation of the priority application if it was not published in Spanish and the Examiner considers that the validity of the priority is relevant for the patentability of the invention or when an opposition is filed.
Note: as of November 6, 2013 submission of a power of attorney appointing a Spanish patent agent where an agent is acting for the applicant is no longer mandatory but optional. The Spanish Patent and Trademark Office may require a power of attorney to be filed where there is reasonable doubt regarding the entitlement of the agent to act, upon appointment of an agent or a common representative, and where submissions are made by an agent or common representative who was not named on the request form at the time of filing.
For a European Patent producing its effect in Spain:
– A request for the provisional protection provided in Article 67 of the European Patent Convention requires the filing at the Patent Office of a Spanish translation of the claims, with the drawings appearing in the patent application;
– A translation into Spanish of the entire specification of the European patent, once granted, must be submitted within three months from the mention of the grant, in order that the patent may have effect in Spain. However, this term may be extended by a further two months upon specific request submitted in writing to the Spanish Patent and Trademark Office.
– A European patent may still be validated, subject to certain conditions, even though the term for filing the translation has expired. To that effect it is necessary to file an application for restoration of rights in which it must be shown that the owner was unable to observe the time limit despite having taken all due care required by the circumstances. The deadline for the filing of the application for restoration of rights is two months from the removal of the cause of non-compliance, but in no event may it be filed more than a year after the end of the unobserved time limit.
– The minimum time period for paying renewal fees due at validation is two months.
– When not resident in a member State of the European Union, the applicant for a European patent must appoint and go through a local chartered patent attorney in order to act before the Spanish Patent and Trademark Office.
For applications under the PCT:
– Spanish is the accepted language of the Spanish Patent and Trademark Office when acting under the PCT. However, since January 1, 2018, English is also accepted for the whole PCT procedure.
– The application fee provided for under the Spanish Patent Act must be paid.
Time limit for entering the national phase under PCT Chapters I and II: 30 months.
For utility models:
– The Law establishes the same requirements as for patent of invention applications, although it is not necessary to include an abstract of the invention constituting the subject matter or object of the model. Utility models can now protect chemical substances, but not pharmaceutical ones.
Filing without power of attorney: possible and no longer mandatory. This requirement becomes optional. The Spanish Patent and Trademark Office may require a power of attorney to be filed where there is reasonable doubt regarding the entitlement of the agent to act, upon appointment of an agent or a common representative, and where submissions are made by an agent or common representative who was not named on the request form at the time of filing.
Filing without some requirements: possible. The minimum requirements to obtain a filing date are a written request for the grant of a patent, the identification particulars of the applicant and a description in any language, even without claims or a reference to a previously filed application. In that event, the rest of the necessary documentation must be completed within a term of two months, provided that this does not entail an extension of the subject matter of the patent. The application may be amended later (if the amendment affects all or part of the subject matter of the application, the filing date of the patent will be considered as that on which the amendment was made).
Electronic filing: possible. The official fee is reduced by 15% when electronic filing is used.
Electronic signatures: are accepted.
Examination Procedure
Admission of application: the Patent Office examines the application to see if it meets the minimum requirements and orders admission of the application, opening the grant procedure.
Formal examination: following admission, the documents filed are examined completely, from the formal viewpoint, special attention being paid to the requirements of patent eligibility and unity of invention. After this formal examination and correction of any defects found (of which the applicant will have been notified), if the Patent Office considers that the subject matter is not patentable or that the application continues to contain defects which were not duly remedied, it will issue a decision rejecting the application in full or in part; otherwise it will notify the applicant that the granting procedure continues.
Report on the state of the art: the request that the Patent Office draw up the report on the state of the art must be made by the applicant within one month from the filing date of the patent application. This report will not be required for patent applications for which the international search report has been prepared by the Spanish Patent Office acting as International Search Authority (ISA). In the report on the state of the art the Patent Office will mention the documents, publications or patents that may be taken into consideration to judge the novelty and the inventive step of the invention. The Patent Office will also provide a written opinion on the patentability of the invention. The Patent Office will serve the report on the applicant and publish it together with the publication of the patent application. Subsequently, there is a three-month term in which the applicant must request a substantive examination. Where no such request is made the Patent Office will consider that the application is withdrawn. Any person may then submit a third party submission brief to the Patent Office with reasoned and documented observations regarding the novelty, inventive step or industrial applicability of the claimed invention. The applicant in turn may submit comments he deems pertinent, both in relation to the report and to any third party observations, within a term of two months.
Amendments (alterations) and voluntary amendments to the application: except in cases concerning the rectification of obvious errors, the applicant may amend the claims only in those steps of the grant procedure in which this is permitted in the Law, and subject to the conditions established in the Regulations. The possibility of amending claims includes that of amending the description and any drawings or biological sequences.
Substantive examination – objections of the Office – third party oppositions: applicants must request an examination as to novelty, inventive step and industrial applicability of the subject matter of the patent application, to be submitted within three months from publication of the report on the state of the art. The request is subject to payment of a fee and may not be withdrawn. Notice of the request will be published in the Official Industrial Property Gazette. The Patent Office will then conduct its official examination as to whether all requirements are fulfilled. If the examination reveals non-fulfillment of a requirement preventing grant of the patent, the Patent Office will notify the applicant of the outcome of the examination and will transmit to the applicant its objections against grant of the patent, setting a term of two months for submission of a reply to the objections. In response, the description and claims may be amended, if the applicant deems it appropriate to do so, although in no case the amendments can broaden the scope of the application as filed. If the applicant takes no action to overcome the objections raised by the Office, the patent will be rejected. Otherwise, after receiving the applicant's response, the Office will consider whether the claimed invention meets the requirements of the Law and Implementing Regulations; in the negative it may give the applicant additional opportunities to overcome the deficiencies found. These new opportunities can have the form of additional written proceedings or a single oral proceeding, when it is considered expedient by the Office or is requested by the applicant. Finally, the Spanish Patent and Trademark Office will take the decision to grant the patent or reject the application.
Accelerated examination: applicants may request expedited examination by the Patent Office on the filing date or afterwards. No fee is currently charged. The Spanish Patent and Trademark Office (OEPM) is member of the Patent Prosecution Highway program, maintaining cooperation agreements with the Patent Offices of China (CNIPA), Japan (JPO), United States (USPTO), Canada (CIPO), United Kingdom (UK-IPO), Australia (IPA), Finland (NBPR) and Russia (Rospatent). Under this program, to prevent duplication of work, where any one of the above-mentioned Offices has to carry out an examination as to patentability requirements, that Office will take into account the results of any previous examination as to patentability requirements carried out on the same subject matter by another of the Offices with which it shares a PPH agreement. The information exchange includes any work carried out in the framework of the PCT.
Examination of utility models: the procedure for admission and for formal patent eligibility is the same as for “patents“, although without examination of novelty, inventive step or sufficiency of the description. The application for the model is published and publication opens a term of two months during which any party with a legitimate interest may oppose the protection sought, claiming failure to meet any of the legal requirements established, as well as lack of novelty, inventive step or insufficiency of the description; any oppositions will be served on the applicant so that he may contest them; the Patent Office will then issue a granting or rejecting decision.
Publication of the application: notice of application will be published eighteen months from the filing or priority date (sooner at the request of the applicant). The specification and, if appropriate, drawings together with the most relevant particulars of the application will also be published.
Disputes about ownership: if ownership of the invention is disputed, jurisdiction to decide will correspond to the law courts; if the court were to hold that the owner is a person other than the holder of the patent, that person may claim that ownership be transferred to him; if the patent application were under prosecution, he may take the place of the applicant, file a new application (which will enjoy the same priority) or request that the application be refused.
Prior user disputes: a prior user cannot intervene in the procedure, although he may be acknowledged the possibility of continuing to exploit the invention subject of the patent in Spain or to commence exploitation (if he had made serious and effective preparations for such exploitation); the law therefore recognizes the so-called “right of prior use”, provided there was good faith.
Provisional protection: this is provided for the applicant from the date of publication of the patent application; it comprises the right to claim compensation from any third party who, between the date of publication of the application and of publication of the grant, might have misused the invention. Compensation may not be claimed or legal action initiated until the patent has been issued.
Divisions: a patent application may not relate to more than one invention or a group of inventions so linked as to form a single general inventive concept; however, it is possible to file divisional applications in cases of complex inventions. Applicants may file divisional applications of their own accord before the granting decision has been prepared for publication by the Patent Office.
Secrecy: the content of all patent applications is held secret for one month from their filing date. The secrecy term may be extended to four months if the Spanish Patent Office considers the subject matter of the application to be of potential interest to the national defense. In that event a copy of the patent application will be made available to the Ministry of Defense for the latter to decide on continued secret prosecution; the owner may claim compensation for this from the State.
Granting
Grant: the patent is granted by virtue of a decision of the Patent Office, following the formal and patentability examination. The patent is granted without prejudice to third parties and without guarantee of the State as to the validity thereof or the utility of the subject matter of the patent.
Publication: the Patent Office’s granting decision is published in the Official Gazette.
Appeals: from the decision of granting or rejecting a patent, it is possible to lodge a contentious-administrative appeal with the special courts of that jurisdiction (after filing an administrative appeal at the Patent Office); in this appeal it is only possible to submit issues that could have been raised in the procedure at the Patent Office.
Beginning of protection: from the date of grant, although the effects go back to the filing date; there is also provisional protection for patents which are only at the application stage (see “Provisional protection” above).
Duration of protection: twenty years for patents and ten years for utility models, to be counted in both cases from the filing date.
Extension: since January 2, 1998, it is possible to extend the duration of medicinal patents pursuant to the provisions of Council Regulation (EEC) No. 1768/92 of June 18, 1992, concerning the creation of a Supplementary Protection Certificate for medicinal products, and the duration of patents covering plant protection products pursuant to the provisions of Regulation (EC) No. 1610/96 of the European Parliament and of the Council of July 23, 1996, concerning the creation of a Supplementary Protection Certificate for plant protection products. In addition, the Act revising Article 63 of the European Patent Convention done in Munich on December 17, 1991, came into force for Spain on July 4, 1997.
Annuities: to keep a patent in force it is necessary to pay annual fees, in advance of each year. For patents and utility models, the due date is the last day of the month marking the anniversary of the filing date of the application, but they are not payable until the patent is granted. Once the patent has been granted, accrued annuities are paid retroactively. Annuities may be paid up to three months following the day following the due date.
Annuities grace period: payment may be made with delays of up to three or six months, subject to a different surcharge in each case. Moreover, a supplementary grace period of one year is available. Failure to pay an annuity causes lapse of the patent.
Amendment of issued patents: at the request of its holder, a patent the grant of which has been confirmed may be limited by amending the claims at any time during its legal life, including the period of validity of any supplementary certificates.
Marking of patented goods: not compulsory, but quite common.
Text of marking: if desired, marking may be “Patentado” or “Pat.”, or “Pat. No. …”.
Assignments: both patent applications and patents or utility models are transferable and may be the subject of licenses and of usufruct. Both these acts and any modifications of rights must be recorded at the Patent Office in order to be effective in respect of third parties.
Licenses: it is possible to grant voluntary or contractual licenses, for the whole patent or utility model or for some of the rights conferred thereby, for the entire Spanish territory of for part thereof, on an exclusive or non-exclusive basis, for a limited period or for the entire duration of the patent. Unless stipulated to the contrary, it will be understood that the license is non-exclusive, that the licensor may exploit the invention himself and that he is obliged to provide the licensee with the necessary technical knowledge for adequate exploitation of the invention.
Licenses of right: the patent holder may offer the grant of a license of this kind through the Patent Office and in that event the annuities payable to keep the patent in force are reduced by half; once this offer is published it may be taken up by any interested party, who is authorized to exploit the patent one week after notifying the Patent Office of his intention; the royalty will be set by the Patent Office, in the absence of agreement between the parties; this license is considered to be a contractual license, with application of the provisions on contracts of that type; the license will not be exclusive; it is not possible to apply for or grant a compulsory license under a patent subject to the offer of licenses of right.
Working: in accordance with the provisions of Article 90 of the Patent Act, the holder of a patent must work the patented invention himself or through an authorized party, either in Spain or in the territory of a member State of the World Trade Organization, and such working must be sufficient to meet the demand of the national market. This obligation must be met in the term of four years from the filing date of the patent application or three years from publication of notice of the grant (the term expiring on the latest date is applied automatically). Upon conclusion of that term, any party may file an application for a compulsory license, for non-working, or, except for legitimate reasons, if no effective preparation for working the patent has been undertaken. The compulsory license system shall not be applicable if a public offer to grant a license has been made (so-called licenses of right). If the patent remains unworked for two years following the grant of a compulsory license, the patent may be cancelled in court. Working can be proved in any way when necessary, but it is possible to obtain an official certificate, which is issued following an inspection and recorded at the Patent Office; when working is thus proved it is presumed, saving evidence to the contrary, that the patented invention is being worked in the manner required by the law.
Restoration of lapsed patents: an applicant for or holder of a patent or any other party to a procedure who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit shall have his rights re-established upon request if the non-observance of this time limit has led directly to the loss of a right.
Expropriation: patents may be the subject of compulsory expropriation, just as any other property, due to public utility or social interest, following payment of adequate compensation to their owners.
Modification of Protection after Registration
Rights of prior user: patent holders may not prevent those who, prior to the priority date of the patent, have in good faith been exploiting the patented subject matter within the country or who have made serious and effective preparations for such exploitation from continuing or initiating exploitation just as they had been doing previously or for which they had made the preparations, to the extent necessary to meet the reasonable needs of their enterprise. This right to exploitation is transferable only in conjunction with the enterprise. The rights conferred by the patent do not extend to acts concerning a product covered by it after that product has been put on the market by the person who enjoys the right to exploitation established in the preceding paragraph.
Opposition to granted patents: for patent applications filed after the entry into force of Patent Act 24/2015, within six months of the publication of the grant in the Official Industrial Property Gazette, any person may oppose the grant on any of the following grounds: (a) the invention claimed does not meet the patentability requirements established in Part II of the Patent Act 24/2015; (b) its description is not sufficiently clear and complete as to enable a person skilled in the art to carry it out; (c) the subject matter of the patent granted extends beyond the content of the application as filed. For patent applications filed before the entry into force of the Patents Act 24/2015, the provisions of the previous Patents Act 11/1986 will apply.
Nullification: nullification of a patent or utility model will be pertinent: (a) when it is proved that the subject matter does not meet one of the patentability requirements; (b) when the invention has not been described in a manner sufficiently clear and complete so that it can be carried out by a person skilled in the art; (c) when its subject matter extends beyond the contents of the patent application; (d) when the owner of the patent had no right to obtain it, not being the inventor or his successor in title. The law courts hold jurisdiction to declare nullity: the nullification action may be brought both by those who consider themselves prejudiced by the existence of the patent and by the Public Administration. Partial nullity (only affecting some claims) may be declared.
Cancellation/lapse: patents and utility models lapse: (a) upon expiration of their effective term; (b) by waiver of their owner; (c) for failure to pay an annuity; (d) for lack of working during the two years following grant of the first compulsory license; (e) for failure to meet the working obligation, when the owner of the patent may not benefit from the provisions of the Paris Union Convention. Partial waiver is accepted and restoration is possible (see 5. above: “Restoration of lapsed patents”).
Compulsory licenses: possible in the following cases: (a) lack of or insufficient working of the patented invention; (b) need of exportation; (c) dependency between patents; (d) reasons of public interest for the grant of license. The Patent Office will receive the license applications and may act previously as a mediator (attempting to get the parties to execute a license agreement, in an entirely voluntary manner). The license petition made through the Patent Office must be accompanied by documentation supporting the allegations of the applicant; the Patent Office hears the owner of the patent and then issues a decision ordering the grant of the license and establishing its contents (that is, its territorial scope, royalty, duration and guarantees the licensee must furnish, as well as any other clauses assuring serious and effective working of the invention); the license granted may not be exclusive; the licensee is not entitled to grant sub-licenses.
Infringement: pursuant to the Revised Criminal Code (Organic Act No. 5/20100), the criminal offense of infringement is defined as (a) manufacturing, importing, possessing, using, offering in trade, or introducing into trade the products protected by the patent for industrial or commercial purposes without the consent of the holder; and (b) using or offering to use a process protected by a patent and possessing, offering in trade, introducing into trade, or using a product obtained directly by the patented process.
Penalties: imprisonment of from six months to two years and a fine of from twelve to twenty-four months. Pursuant to the Revised Criminal Code (Organic Act No. 1/2015) the penalties may be increased to imprisonment for two to six years, a fine of from eighteen to thirty-six months, and disqualification from practicing a profession related to the crime committed for from two to five years where the following aggravating circumstances occur: (a) particularly large profits are obtained; (b) the crime is especially serious given the value of the items unlawfully produced or particularly large damage caused; (c) the offender is a member of an organization or association for carrying out such activities; and (d) minors aged under eighteen are used to commit the crime.
Legal persons may also be held criminally liable for crimes committed on behalf of and for the benefit of the undertaking by its directors or legal representatives or by its employees in the absence of proper oversight.
Penalties for legal persons: a fine equal to two or four times the profit obtained or advanced if the crime committed by the natural person is punishable by a prison sentence of more than two years; and a fine equal to two to three times in all other cases. In serious cases the courts may order dissolution of the legal person, suspension of its activities, closure of the undertaking's premises and establishments; prohibition on carrying out future activities in the sector; disqualification from receiving government subsidies and aid, from contracting with public sector entities, or from enjoying tax benefits; and court-appointed receivership. Convicted offenders are also civilly liable if the crime gives rise to damages, including lost profits. Interlocutory relief may be sought during criminal proceedings, including, for example, seizure and impoundment of the means and equipment used to commit the crime, bonds to cover civil liability, liens where no bond is furnished, preventive custody of the offender, etc.