A patent can refer to a new process, a new device, a new product, or an improvement or enhancement of any of these. Any natural or legal person can apply for a patent. They can act either directly or through an industrial property agent or an authorized representative. Non-residents of a European Union member state must always act through an industrial property agent. The patentability requirements are assessed in relation to the state of the art, which consists of everything that has been made accessible to the public before the filing date of the application, whether in Spain or abroad, through a written or oral description, by use, or by any other means.
What is NOT considered an invention? Discoveries, scientific theories, and mathematical methods. Literary or artistic works, or any other aesthetic creations, as well as scientific works. Plans, rules, and methods for performing intellectual activities, for games, or for economic-commercial activities, as well as computer programs. Forms of presenting information.
What is NOT considered an invention applicable to industry? Surgical or therapeutic treatment methods for the human or animal body, or diagnostic methods applied to the human or animal body. However, products such as substances or compositions and inventions related to devices or instruments for implementing the above-mentioned methods can be patented.
What CANNOT be patented? Inventions whose publication or exploitation would be contrary to public order or morality. Specifically, this includes: human cloning procedures, procedures for modifying human genetic identity, the use of embryos for industrial or commercial purposes, and procedures for modifying the genetic identity of animals that cause suffering without substantial medical or veterinary benefits for humans or animals, as well as animals resulting from such procedures. Plant varieties and animal breeds. Essentially biological processes for obtaining plants or animals. The human body at different stages of its constitution and development, as well as the mere discovery of one of its elements, including the sequence or partial sequence of a gene.
International Patent Protection. To protect an invention in other member countries of the Paris Convention or the World Trade Organization, the applicant can exercise the right of priority. This right allows the applicant to file in other countries within 12 months of the initial filing date while maintaining that original filing date (priority date). There are also options for filing applications with effects in multiple countries simultaneously, such as through the European route or the PCT (Patent Cooperation Treaty) route.
Licensing vs. Assignment of a Patent. When seeking to earn long-term royalties, assigning a patent is not the most prudent commercialization method. Here’s why: In a license, failure to pay royalties is a breach of contract, allowing the licensor to terminate the agreement. This contractual clause acts as a deterrent for the licensee, encouraging them to fulfill their royalty payment obligations. In contrast, an assignment is an irrevocable and permanent transfer of the patent’s ownership. The assignee, even if they fail to pay royalties, does not risk losing their rights to exploit the patent. Instead, the only recourse available to the original patent owner is to pursue a civil lawsuit for damages. This makes assignments less favorable when expecting long-term royalty payments.
However, if a patent holder prefers a lump-sum payment instead of ongoing royalties, then an assignment may be a better option. In some cases, a lump-sum payment can also be included in a license agreement. If the lump-sum payment covers the entire remaining patent term, the buyer may demand full and irrevocable ownership instead of a revocable license. When the lump-sum payment covers only a short period, granting a license for that period is preferable to a full assignment. A patent can generate royalties for up to 20 years, but market fluctuations, regulatory changes, technical challenges, or competition can reduce expected revenues.
By assigning a patent, the original owner transfers these risks to the assignee. The lump-sum payment received is non-refundable, even if unforeseen difficulties arise. However, the downside is that the assignment price is calculated based on the patent’s current value, factoring in potential risks and discount rates. This may result in the patent holder earning less than they might have through long-term royalties. Despite these drawbacks, a lump-sum payment can be advantageous. Selling a patent can sometimes be a better way to raise capital than taking on loans or issuing shares.
For example, a biotech startup focused on R&D might assign a patent to secure funding for further research rather than licensing it out. While assigning a patent is not always the best approach, in some cases, it is the most strategic decision.
Trademarks. A trademark is a sign that differentiates the products or services of one company from those of another. Trademarks are protected industrial property rights. At the national or regional level, a trademark can be protected by registering it, which involves submitting an application to the national or regional trademark office and paying the corresponding fees. At the international level, there are two options: filing a trademark application in each country where protection is desired or using the Madrid System for international trademark registration.
In principle, trademark registration grants the owner exclusive rights to use it. The owner may use the trademark exclusively or license it to a third party in exchange for payment. Trademark registration provides legal security and strengthens the owner’s rights in case of legal disputes. Trademark registration typically lasts 10 years and can be renewed indefinitely upon payment of renewal fees. Trademark rights are private rights and are enforced through the courts.
Trademarks can consist of words, letters, or numbers. Drawings, symbols, or three-dimensional elements (such as product shapes or packaging). Non-visible elements such as sounds, scents, or specific colors used distinctively.
Patentability Requirements. For an invention to be patentable, it must meet three criteria: Novelty – An invention is considered new if it is not part of the state of the art. Inventive step – An invention has an inventive step if it is not obvious to a person skilled in the field based on prior knowledge. Industrial applicability – An invention must be capable of being manufactured or used in any industry, including agriculture.
Source: OEPM
