A new Patent Act for Spain: what does it change?
On July 25, 2015 the Spanish Official Bulletin published the Act 24/2015, on Patents. A new legal text has therefore been passed and will enter into force on April 1, 2017, a long period still of 20 months
What are the main changes of this new Patent Act?
Apart from the modification in the numbering of the provisions, the new act follows the same structure of the text of the Patent Act of 1986, today still in force.
Why has it been approved?
The main reason given by the Spanish government to submit a bill for a new legal text to the Spanish parliament was the political intention of suppressing the granting of patents without examination. This means that once the act enters into force, the Spanish Patent and Trademark Office will only grant patents under examination, as it happens in the US or in the EPO, UK, Germany or Japan.
This will entail one of the most important changes in the history of the Spanish patent system. Until the year 2000, patents in Spain had always been granted without examination of the patentability requirements. After that year, and up to now, patents have been granted in Spain with or without examination, ‘à la carte’, depending on the decision of the applicant.
According to the memory of activities of the SPTO, 3,031 patents were applied for before the SPTO in 2014 (1,146 by companies, 1,206 by individuals and 679 by universities and public organisms); the examination of the patentability requirements is requested for less than a 10% of the applications. In that same year the validation of 17,405 granted European Patents was requested in Spain.
The fact that patents will necessarily be subject to prior examination of the patentability requirements will help to reduce the existence of artificial barriers in commerce. Patents granted without examination favours the filing of claims excessively broad, what gives rise to potential threats to competitors, behind which there are no true inventions.
Most probably, the number of Spanish inventions will decrease after the entry into force of the new Patent Act. This will be because most of the innovations that do not deserve to be recognised as inventions will probably not be filed as patents. In part, this could also be a consequence of the increase of costs to obtain a patent for those small companies or individuals that are very sensitive to any increase in the costs and do not have any defined patent and licence policy.
Now the Spanish Government will have to pass a regulation to adapt the necessities of the new Patent Act and the Spanish Patent Office will have to take the necessary steps to be ready to apply the new act in April 2017.
Although the declaration of intent to suppress IP rights that “just shift to competitors the cost and burden to nullify patents that should never have been granted, and encourage distortion of competition”, the truth is that the behaviour that has been denounced will just shift to utility models. These rights, in effect will continue to be granted with examination.
Nowadays utility models are granted in Spain to any invention that has not been disclosed in Spain in a very obvious way to a person skilled in the art. With the new act, the state of the art will be the same as that applicable to patents (accessible to public anywhere), but inventive step will maintain the reference to what it is not “very” obvious to an expert in the field.
Therefore, utility models will continue being granted to scarce innovations that do not deserve a patent. Is this good for the market? We are afraid it is not and the Spanish legislator seems to confirm this in the preamble of the Patent Act, the declaration of intentions that opens the legal text.
The number of applications of utility models applied for in Spain in 2014 was 2,689 (949 by companies, 1,706 by individuals and 34 by universities and public organisms). Possibly, after the entry into force of the new act utility models will absorb the drawdown in the number of national patent applications.
Apart from these two aspects of the new Patent Act, some changes to be highlighted are the insertion in the law of the articles of adaption to the Spanish patent system of the EPC and the PCT agreements (until now approved through Royal Decrees of 1986) and the mentioning of the Supplementary Protection Certificates regulated through EU law but granted by the Member States.
Let’s see what happens before and after April 1, 2017.