Entry into force of the new Spanish Patent Law
On 1 April 2017, the new Spanish Patent Law 24/2015, approved in July 2015, will enter into force
replacing the currently applicable Law 11/1986. This new law intends to update Spanish patent law to
adapt it to international standards and, in particular, to bring it further into line with European legislation.
Since the current Law was approved in 1986, several agreements have been signed on industrial property,
such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the Patent Law
Treaty (PLT), in addition to the creation of Supplementary Protection Certificates (SPCs) for medicines
and phytosanitary products, which have made a renovation of the current patent system in Spain
necessary.
Among the main changes incorporated in this new Law, the most notable aspect is the establishment of a
single grant procedure for patent applications, which requires a substantive examination to be carried out,
among other to assess novelty and inventive step. Thus, the currently available option allowing for a
general grant procedure (registration procedure without examination), irrespective of compliance with
patentability requirements, does no longer apply. The aim is to establish a more robust patent system that
avoids unjustified monopolies.
Other important changes introduced by this new Law are summarized below:
- The exemption of fees for public universities is eliminated, although these will have a 50%
bonus in the amount of the fees paid to obtain and maintain Industrial Property rights, which can
further be 100% provided that they prove that the invention is being exploited.
A 50% reduction in application filing, search report and examination fees, as well as in the first
three annuities, is established for individuals and SMEs who certify the status of entrepreneurs.
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The Search Report must be requested at the time of filing the patent application. This entails an
increase in the initial cost of the patent application; however, it is to be expected that the search
report and the written opinion on patentability will be issued in advance (before 12 months), thus
allowing a more objective assessment on the convenience of extending the application to other
countries within the priority year.
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For the evaluation of the novelty requirement, European applications designating Spain, as well as
PCT applications that have entered into national phase in Spain, whose filing date is prior to the
filing of the patent application and have been published in Spanish on or after that date, are also
considered as prior art documents.
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In relation to medical use patents, the amendments adopted in the Revision of the European Patent
Convention made in 2000, which entered into force in 2007, by allowing the patentability of
substances or compositions already known for use as a medicament or for new therapeutic
indications are also incorporated in the new Law. Therefore, the wording of second medical use
claims in Swiss-type form does no longer apply.
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Opposition prior to grant is replaced by a post-grant procedure comparable to that of the European
system, with the difference that this opposition will have to be submitted within six months,
instead of the nine-month period applicable at the European patent office.
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The declaration of partial nullity of a claim will be allowed. Furthermore, the patentee may limit
the patent by modifying the claims, or even revoke it in its entirety. The revocation or limitation
procedure at the request of the owner of the patent may be initiated at any time during the validity
of the patent and will be retroactive as in the case of total or partial nullity.
Entry into force of the new Spanish Patent Law
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As regards utility models, the scope of protection is extended to any product or composition
(including chemicals) with the exception of biological material and pharmaceutical substances and
compositions. This will counteract, to a certain extent, the impact of substantive examination in
the case of patents, thus facilitating product and composition protection through a procedure that
does not require examination, although conferring more limited protection over time (10 years).
Also in relation to utility models, another change incorporated in the new Law is the state of the
art with reference to which novelty must be assessed, which is now not restricted only to
disclosures in Spain, but the novelty requirement will be the same as that required for a patent
(absolute novelty). In addition, the exercise of defensive actions under the rights conferred by a
utility model title is conditional to prior obtaining of a Search Report directed to the object of said
title.
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Supplementary Protection Certificates (SPCs) are expressly included among the protection titles.
On the other hand, in accordance with the first transitional provision of this new Law, administrative
procedures initiated prior to its entry into force will be processed and decided in accordance with the legal
regulations in force on the date of submission of applications.
Under this provision, and for practical purposes, patent applications submitted prior to the entry into force
of the new Law can still be processed following the above mentioned general procedure of grant (no
substantive examination required), and the Search Report can still be requested after filing the patent
application (as opposed to at the time of filing). In addition, currently applicable fee exemptions will
continue to be applied for public universities.
Therefore, and in anticipation of an eventual buildup of Spanish patent applications to be filed prior to 1
April, 2017, please let us know well in advance if you wish to submit a Spanish patent application so that
we can guarantee its filing before the aforementioned date.
The text of the law can be found here.