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On last April 11th, the Spanish Council of Ministers approved on first reading the Draft Law on Patents, reviewing the legal system of industrial property in Spain, regulated by the Patent Law 11/1986 currently in force. The main objective of the new law is to adapt its regulation to the main international patent systems and also strengthen the Spanish patent grant procedure, establishing a new legal framework to boost the innovative activity.

The law seeks to promote and protect innovation in Spain, providing applicants with attractive ways to obtain national protection of their inventions within the country. The new law offers companies, individual entrepreneurs and public and private institutions a quick and effective way to protect their innovations through strong patents, eliminating disadvantages compared to European and international patent applications.

Also, the aim of improving the strength of the patent system shall avoid granted monopolies unless novelty and inventive step of an application is clearly justified. It shall also help to ensure the robustness of the Spanish patent grant procedure, while avoiding technological bubbles and generally improving the image of the Spanish patent system.

Major developments:

- The filing and search fees will be reduced by 50% for individuals and SMEs.

- The grant procedure will compulsory include novelty and inventive step substantive examination, which will lead to higher quality patents, comparable to those of neighboring countries.

- The introduction of a single grant procedure leading to a single title (by eliminating the general patent grant procedure without examination) will also benefit legal certainty, since it will comprise a double filter constituted by the substantive examination of the applications and possible third-party oppositions.

- Applicants will have access to relevant prior art information before the 12-month priority period that will enable them to take decisions on the possibility of, for example, extending their application in other countries, thus improving the internationalization strategy for protecting patented technologies.

- The new law includes accelerated prosecution reducing administrative burdens for solid patents. In the case of utility models, their scope shall also extend to chemical products.

- The formal requirements of the applications and other administrative tasks are harmonized with those already applied in international proceedings, eliminating comparative disadvantages.

- The law further clarifies the rules governing employee inventions (those occurring in the context of a professional relationship), simplifying the process and increasing legal certainty.

- The regulation of so-called compulsory licensing is further simplified for the cases when, for reasons of public interest, the patent owner must license a patented technology when it is not being used.

- Finally, Supplementary Protection Certificates (or “CCPs”) will be explicitly included among the titles of industrial property protection. These titles will extend for five years the protection afforded to a patent for a pharmaceutical or plant protection product, to compensate for the longer period of time it takes for these patents to be granted until they receive a marketing authorization.

The role of the SPTO:

The law also provides that the Spanish Patent and Trademark Office (SPTO, under the Ministry of Industry, Energy and Tourism), will be the only national institution that will grant a filing date to patent applications, and will also be the only to grant patents, thus ensuring market unity. The law also regulates the performance against the SPTO so that applicants shall only need to act through an Agent of Industrial Property (API) in cases where the applicant is not a European-Union resident.

The law also includes the promotion and development of the SPTO as mediation and arbitration institution and, in accordance with current legislation, the functions conferred upon it for the settlement of disputes concerning industrial property.

Source: Spanish Patent and Trademark Office