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Propiedad Industrial e Intelectual

The most significant changes brought by the new Spanish Patent Act

On April 2017, the new Spanish Patent Act 24/2015, enacted on 24 July 2015, entered into force, and replaces the previous Patent Act 11/1986.

The main aim of this new act is to adapt the Spanish patent law to international standards as well as to approaching to European legislation.

The Spanish Patent Act 24/2015 has brought several changes, among which we point out the following:

  • A single grant procedure for patent applications is established, which requires a substantive examination of novelty and inventive step.
  • Supplementary Protection Certificates (SPCs) are expressly mentioned among the IP rights granted by the Spanish Patent and Trademark Office (SPTO).
  • The filing, search and examination fees are reduced 50% for entrepreneurs and SMEs. The exemption of fees for public universities is eliminated, but they can have a 50% bonus in the filing and maintenance of their IP rights and a 100% bonus if they can prove that the invention is being exploited.
  • Regarding the analysis of the novelty requirement for patents, the state of the art includes as prior art documents: (i) European applications designating Spain and (ii) PCT applications that have entered into national phase in Spain, the filing date of which is prior to the filing of the Spanish patent application and has been published in Spanish on or after that date.
  • In connection with the inventions made within the framework of an employment relationship or services, the presumption that the invention made by an employer within the following year after the termination of the employment was carried out during the employment relationship admits expressly that the employee can bring evidence to the contrary.
  • The inventions made by employees of public universities, public research centers or other public institutions will belong to those entities if the researchers developed the invention under their public functions.
  • The so-called “bolar clause” is separated from the exemption of experimental use since each exemption is considered to have its own purpose.
  • To ensure cessation of the infringing activity, the new act refers to coercive compensation, and establishes that all related to the calculation and settlement of the possibility of such compensation will be determined in enforcement proceedings.
  • The granting proceedings for obtaining compulsory licenses are simplified. Two new compulsory licenses are included; (i) those intended to stop practices that has been declared to be contrary to competition law by Courts, and (ii) those aimed to manufacturing medicaments used for exportation to countries with public health problems. A compulsory license can be requested by third parties if the patent holder has not initiated the exploitation of the patent or the exploitation has been interrupted for the period of 1 year, instead of 3 years.
  • In addition to the Patent holder, licensees or others with a right to exploit are able to institute infringement actions if they can demonstrate that they have requested the registration of their right before the SPTO, subject to its effective registration.
  • In connection with medical use patents, the patentability of substances or compositions already known for its use as a medicament or for unknown therapeutic application is expressly allowed by the new Law.
  • The Opposition prior to grant is replaced by a post-grant procedure, as in the European system. The opposition should be submitted within six months after the publication of the grant, instead of the nine-month period applicable at the European Patent Office.
  • The scope of protection of utility models extends to any product or composition (including chemicals) with the exception of biological material and pharmaceutical substances and compositions. Utility models do not require examination, but its enforcement in Court is subject to prior obtaining of a search report from the SPTO.
  • The state of the art to be considered in utility models is not restricted to disclosures in Spain, as in the former Patent Act of 1986, but extends to any disclosure made available to the public before the date of priority, just the same as in patent.

From a procedural point of view

  • The defendant must file its defence or counterclaim to the lawsuit within the period of 2 months after being summoned. The extension of the deadline is justified on the complexity of patent proceedings.
  • The Patent holder is allowed to limit the claims of the Patent totally or partially before the SPTO (as regards Spanish Patents) or in Court proceedings on nullity. The patentee may limit the patent by modifying the claims. The revocation or limitation procedure at the request of the patent holder 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.
  •  Protective letters can be filed before Courts so that the future defendant can be heard before an expected preliminary injunctions in audita parte is decided. The protective letter will be communicated to the other party.
  • The Court can ask a technical expert opinion from the SPTO or other independent technical expert in order to clarify controversial technical issues arising in the proceedings.

The purpose of the new Act is to establish a stronger patent system which tries to avoid unjustified monopolies. Nevertheless, we will need some years to analyze how these changes will impact in the day to day practice.