On 1 April 2017, the new Spanish Patent Act will come into force. This new law is aimed to bring the Spanish law system into conformity with European and international rules as well as to simplify and strengthen the Spanish patent system by establishing a single granting procedure.
One of the most relevant changes introduced is that all patent applications filed after 1 April 2017 shall be prosecuted under substantive examination procedure. Therefore, it will become compulsory to request full substantive examination on novelty and inventive step, among other requirements. Consequently, the general granting procedure by which patents could be granted regardless of its patentability will no longer be available.
Some of the most relevant changes introduced by the new law are the following:
Changes relating to patents
– Post-grant opposition. The opposition procedure becomes a post-grant procedure. The term for filing oppositions is six months from the publication of the grant of the patent in the Spanish Official Industrial Property Journal.
– Payment of the State-of-the-art Search Report. The payment of the fee corresponding to the Search Report shall compulsorily be made together with the payment of the application fee.
– In invalidity proceedings, claims can be partially annulled and limited by amendment, apart from the traditional revocation as a whole during the whole legal life of a patent.
– The person against whom an infringement action is brought may respond, by way of counterclaim or defence, arguing the total or partial invalidity of the patent. In this case, the patent holder may choose to limit the patent modifying its claims.
– The deadline to reply to claims and counterclaims is extended to two months.
– The rules for employees’ inventions are further clarified, simplifying the procedures and increasing legal certainty.
– Internal priority. Claiming internal priority is now allowed and recognised in order not to discriminate against those filing their first application in Spain.
Changes relating to utility models
– Protection as a utility model (no substantive examination required) may also be granted to any product or composition, including chemicals but excluding biological material, pharmaceutical substances and compositions.
– Worldwide novelty is required for utility models. The requirement of “national novelty” provided in Law 11/1986 has been changed to absolute novelty.
Changes relating to fees
– Reduction of fees for natural persons and SMEs. For entrepreneurs considered to be a natural person or small or medium-sized enterprise (SME), a 50% reduction is applied to filing fees, search fees and examination fees as well as maintenance fees for the first three annuities (third, fourth and fifth annuities).
– Public universities are no longer entitled for exemption of all official fees, even though reimbursement of 50% or even 100% may be requested in case the invention is exploited.
Other relevant changes
– There will be a new intellectual property title, the Supplementary Protection Certificate (SPC), for the protection of medicines and phytosanitary products.
All applications filed prior to 1 April 2017 will be prosecuted according to the Spanish Patent Law 11/1986.
The Ballester IP team remains at your entire disposal for any further information or questions regarding this new law.
Carolina Andrés
Attorney at Law
BIO
