01 Purpose and duration

1. What is a patent? What is a utility model?

Patents and utility models are titles granted by the state, which give the owner the right to temporarily prevent others from commercially manufacturing, selling or using a protected invention in Spain.

2. What are the main obligations of a patent owner or utility model owner?

In exchange for the exploitation monopoly, the owner is obliged to describe his invention such that an average expert on the matter could execute it. The owner is also obliged to exploit the patent or utility model, either himself or through a person authorised by him.

3. Is the exploitation of a patent or utility model compulsory?

A patent owner has the obligation to exploit the patent, either himself or through a person authorised by him, by means of its execution in Spain or in another World Trade Organisation member country.

Patent exploitation must occur within four years from the patent application date or three years from the date of publication of the patent grant (whichever period expires last).

A patent may expire if it remains unexploited.

4. What happens if the corresponding fee is not paid once a patent or utility model has been granted?

Patents/utility models will expire if the corresponding annual fees are not paid.

5.For how long is a patent and/or utility model granted?

For twenty years as of the filing date in the case of patents and for ten years for utility models. Once this term has elapsed, the invention enters the public domain and any person can use it freely.

For cases of patents for pharmaceutical and phytosanitary products only, there is the option to apply for something known as a Supplementary Protection Certificate (SPC) which extends the protection beyond the expiry date of the patent for a maximum period of five years.

6. How much does it cost to obtain a patent or utility model in Spain?

For patents, the fees to be paid to the SPTO range between* €750 for a patent granted under the general procedure, and €1200 for a patent granted under the preliminary examination procedure. For utility models, the application costs around €100. These fees are the same regardless of the technical field or the complexity of the invention to be registered.

If the application is filed electronically, a 15% discount will be applied.

In addition to these fees, the applicant will also incur costs in the preparation of the documentation in order to submit the application.

Furthermore, in order to maintain the rights granted, the owner will have to pay annual maintenance fees which gradually increase from around €23 in the third year up to €633 in the twentieth year (applies to patents only). Fees are updated annually through the State Budgets Act; the updated amounts are always listed on the SPTO website.

7. How does a patent differ from a utility model?

A utility model protects an invention of a lower inventive rank than a patent. Utility models generally refer to improvements to appliances or tools which are already known, i.e. mechanical inventions.

Utility models are considered to be particularly suited to SMEs, which often make "minor" improvements or adaptations to existing products.

* May 2012

8. What requirements need to be met in order for a patent or utility model to be granted?

Firstly, the invention must not be included in the prohibitions specified in the Patents Act. In addition, the invention must be novel, involve an inventive step and have an industrial application.

9. What can be the subject of a patent or a utility model?

The following can be the subject of a patent: a procedure, a manufacturing method, a machine, device or product. Current legislation allows such products to be comprised of or contain biological matter and also accepts the procedures with which biological matter is produced, transformed or used.

The following can be the subject of a utility model: a utensil, an instrument, a tool, an appliance, a device or part of the same. However, a procedure or a product (chemical, food, composition, etc.) can never be protected by a utility model.

10. What cannot be the subject of a patent or a utility model?

Discoveries, scientific theories and mathematical methods; literary, artistic or scientific works; economic-commercial methods; computer programs; ways that information is presented; animal races or plant varieties; inventions that are contrary to public order or morality; the human body in all states of its constitution and development thereof; and essentially biological procedures for obtaining plants and animals cannot be protected by a patent or a utility model. Procedure inventions cannot be protected as utility models, and neither can chemical products or foods.

11. What support is available for the inventor?

The SPTO allows applicants with low incomes to defer payment. This means that if an applicant qualifies, he will not be required to pay any fees for the first three years, but can repay them in subsequent years instead.

This exemption is automatically granted to applicants with a total joint household income (applicant + spouse) of less than twice the interprofessional minimum wage, but it can also be granted to those with an income of less than four times the interprofessional minimum wage.

The SPTO also has a subsidies programme to help with the expenses incurred by applicants for national patents and utility models, as well as international or European patents, provided that they meet the qualifying requirements published each year in the Official State Gazette. See the SPTO website for full information on this subsidies programme as well as other grants offered by several other Public Bodies and Autonomous Communities.

02 Procedure

12. How do I obtain a patent that is effective in Spain?

There are three different routes for obtaining a patent that is effective in Spain:

• National route. The application is filed in accordance with the requirements established by the Spanish Patents Act of 20 March 1986

• European route. Since 1986 Spain has been party to the European Patent Convention, which allows applicants to obtain a set of national patents through a single application to the European Patent Office (EPO)

• International route or PCT. Since 1989 Spain has been party to the Patent Cooperation Treaty (PCT) This system allows applicants to apply for the protection of an invention in each of the signatory states by submitting a single application. This is not a patent granting procedure and nor does it substitute national patent grants, it is merely a unified procedure for processing applications for international patent protection

13. What are the processing procedures that an applicant can choose from to get a patent granted in Spain under Spanish legislation?

The applicant can choose between the General Grant Procedure or the Procedure with Preliminary Examination.

In both cases, once the SPTO has received and formally examined the application, it will produce what is known as a Search Report, indicating the documents judged by the examiner in charge to be related to the patent application analysed and providing a written opinion as to whether the invention can be considered to be novel and involving an inventive step.

In cases where the applicant opts for the General Procedure, even if the SR is unfavourable, the application will still eventually be successful provided that the applicant continues with the process.

If the applicant opts for the Procedure with Preliminary Examination, the SPTO thoroughly examines the patent application and then grants or rejects it (either totally or partially).

14. Is the patent system a lengthy procedure?

It generally takes between 26 and 36 months from the filing of the application to the granting of the patent.

15. What is the accelerated patent grant procedure?

The SPTO has approved a procedure that considerably reduces the duration of the patent grant procedure if the following requirements are met:

1. The application does not claim priority.

2. The reduction in processing times will be greater if the applicant does not exhaust the legally stipulated timescales.

3. The applicant specifically requests this accelerated patent grant procedure.

16. How do I apply for a patent or a utility model?

The applicant must submit an application to the SPTO either in person or through a representative or Industrial Property Agent. Applications may also be submitted at the registries of any administrative body of the General State Administration or Autonomous Community Administration, as well as at post offices.

Applications are also accepted online at the SPTO Virtual Office, for which a digital certificate will be required.

17. What role does an intellectual property agent play in relation to patents and utility models?

An agent is an independent professional who, in exchange for a professional fee, offers his services for advising, assisting or representing others in obtaining patents or utility models and in defending and maintaining the rights derived from them.

It can be beneficial to consult with an agent whenever an applicant is unable to complete the process himself, either due to the complexity of a patent or due to a lack of technical means.

18. Is it compulsory to have an Agent representing me at the SPTO?

It is only compulsory for those who do not reside or have a serious and effective establishment in any European Union member country.

19. If in doubt, how can I find out if an invention is the subject of a patent or a utility model?

You can perform a preliminary search at the SPTO's Information Office. However, if an application is not submitted in the most suitable mode for the invention in question, the SPTO will ask the applicant to request a change to the most suitable mode in order to protect the invention.

20. Is there a risk that civil servants of the SPTO might disclose information contained in an application to a third party?

No. All applications are processed in the strictest secrecy until the time they are published.

But we should not forget that in all cases, provided that the applicant does not withdraw the application, the patent will be published and divulged in the manner stipulated by law.

21. What must an application for a patent or utility model include?

The application must record:

• The petition

• A description of the invention

• One or several claims

• Drawings, which are mandatory for utility models

• An abstract, which is mandatory for patents but not for utility models

• Application fees

22. What are the essential elements that must be included in a patent or utility model application in order to obtain a filing date?

The application must at least record:

• The declaration that a patent or a utility model is being applied for

• Identification of the applicant

• A description and one or several claims

• The applicant's signature

The application may be completed later, but the filing date will be the date when at least the aforesaid elements were presented.

It is important to point out that the subject of the invention cannot be expanded after the filing date of the patent application.

23. What does the description consist of?

The description is a clear and complete explanation of the invention, such that an expert on the subject could execute it.

24. What are the claims?

The claims define the subject of the invention for which the patent or utility model is applied for, in other words, they define the subject of the protection sought.

25. Which patents have to submit drawings?

Patents for which drawings are necessary in order to understand them.

26. What is the function of the abstract?

The function of the abstract is to provide brief information about the invention, allowing easy understanding of the technical problem posed, the solution provided and the main uses of the invention.

27. Is there anyone at the SPTO who drafts the documents that need to be included by applicants in their patent or utility model applications?

No. This does not fall under the remit of the SPTO. The applicant needs to present such invention documents themselves, prepared by their own means and in accordance with the corresponding rules. However, the SPTO is able to provide further information in relation to the corresponding rules.

28. Can the application and other documents be submitted in languages other than Spanish?

Yes. Those submitted at the Offices of Autonomous Communities may be drafted in the corresponding official non-Spanish language, however, they must be accompanied by the corresponding Spanish translation, which will be considered as the authentic text in the event of a discrepancy between both texts.

However, applications submitted directly to the head office of the SPTO must be drafted in Spanish.

29. Can I request information from the SPTO about the status or processing of a patent or utility model?

Yes. The SPTO will respond to questions relating directly to applications processed by this office. Applicants also have the option to consult the status of a file using our web portal (website): www.oepm.es. If the application procedure has been conducted through an industrial property agent, said agent will be the representative before the SPTO.

30. In what order does the SPTO process patent or utility model applications?

The SPTO processes and examines applications strictly in the order in which they are filed.

31.What is the priority date?

It is the date when a patent or utility model application was filed for the first time in any member country of the Paris Convention or of the World Trade Organization. The deadline for claiming this priority in any other country if subsequent applications of the same invention are applied for, is 12 months. This deadline may not be extended.

32. Can changes to a patent or utility model application be made after the filing date?

Yes. During the grant procedure, modifications can be made as long as they do not expand the invention for which protection was initially sought and provided that they are made at the times stipulated by law.

33. What is a patent of addition?

The owner of a valid patent can protect any inventions perfected or developed from the primary invention by requesting what is known as a patent of addition.

Patents of addition are valid for the remaining term of the main patent and are not subject to annual fees.

Patents of addition do not apply to utility models.

34. Can an invention be publicised before filing a patent or utility model application?

No, not if you want to obtain the legal protection that a patent or utility model grants. Only novel inventions can be protected, meaning those that have not been publicised either in Spain or abroad, whether in writing, verbally or by any other means; in other words, they cannot form part of what is known as the "state of the art".

However, there are some exceptions to the above, such as the presentation of an invention at officially recognised exhibitions.

35. What happens if two people separately file an application for the same invention?

The right to obtain protection, whether by a patent or a utility model, corresponds to the person who filed the application first, as long as this application is subsequently published.

36. What happens if errors in an application are not corrected within the deadlines established by the SPTO?

The application will be refused, either totally or partially, depending on the nature of the errors in question.

37. If you have decided to protect your invention, is it important to submit an application as soon as possible?

Yes. By doing so, you will obtain an application filing date before any another application that may be subsequently submitted, and for a modest fee. If an application complies with the essential requisites, even though all the formal requisites have not yet been finalised, it is advisable to submit the application and finalise the other requisites at a later date.

38. What is a Search Report?

A Search Report is a document that lists the patent documentation and technical literature that may be taken into consideration when assessing the novelty and inventive step of the invention that is the subject of the application.

It is compiled within the patent grant procedure and is accompanied by a written opinion as to whether the invention can be considered as novel and involving an inventive step.

39. Is the patent application rejected if the Search Report indicates that it is not novel or lacks an inventive step?

With the current patent grant procedures in force in Spain, if an applicant opts to process his application using the General Procedure, the Search Report is not binding and merely serves to assist in the assessment of the patent.

If the Search Report reveals that the patent application is not novel or lacks an inventive step, the applicant may:

• Decide not to continue with the procedure and withdraw the application

• Make the necessary modifications, as permitted by law, in an attempt to improve the patent application, with the option to continue the process using the procedure with preliminary examination.

• Continue with the general procedure. In this case, the applicant risks being exposed to a third party opposition proceeding once the patent is granted due to a failure to comply with the requirements established by law.

40. Can I patent an invention in Spain that has already been patented abroad?

In order for an invention to meet the novelty requirements, it must not form part of the current state of the art.

In this case, since the invention has already been patented by a company in another country, the invention forms part of the state of the art and therefore cannot be patented.

03 Ownership and transfer

41. If two or more people work together on producing an invention, who has the right to it?

The right to the patent or utility model is jointly shared by all of them.

When an invention results from a collaboration between groups of researchers in different countries, the ownership of the invention will be shared by all the organisations involved, in proportion to the contributions made by the researchers.

42. Can additional inventors be added to a patent?

To register the name of an additional inventor on a patent application or a patent that has already been granted, the current applicant/owner will need to file the relevant application. This application MUST be accompanied by a written document signed by each and every one of the registered inventors in which they give their consent.

43. Can a patent or utility model be applied for on behalf of a company?

Yes. The applicant can be a company, but the application must include the name of the inventor or inventors and, if applicable, must be accompanied by a declaration indicating how the right to apply for the patent or the utility model has been acquired.

44. What is a workplace invention and who has the right to it?

A workplace invention is an invention made by a person who works for a company or organisation under an employment contract or a habitual employment relationship.

As a general rule, the right to a workplace invention made by a worker who has been recruited by a company to carry out an inventive activity belongs to the owner of the company unless there is an agreement to the contrary.

Only in cases where the worker's contribution to the invention is evidently beyond the scope of their employment contract or relationship shall the worker be entitled to additional compensation for the invention.

If the worker is not recruited to conduct research but creates an invention thanks to the resources or knowledge acquired at the company, the business owner may decide whether to obtain ownership or reserve the right to use the invention. In both cases, the worker should be financially compensated.

45. Can a worker of a company apply for a patent if they are moving to a competitor?

It will depend on the time that has passed since they left the company. The law states that inventions for which a patent application is presented within the year following the end of the working relationship or service can be claimed by the business owner.

46.Can a patent or utility model be granted if the inventor dies before filing the application?

Yes. The application must be submitted by the heirs.

47. Can a patent or utility model application or a patent or utility model that is already granted be assigned or transferred?

Yes. The rights over an application, or over a patent or utility model, may be transferred by all means recognised by law. Acts of transfer must be registered with the SPTO to be effective before third parties.

48. What is a licence of right?

The owner of a patent can notify the Spanish Patent and Trademark Office in writing of his willingness to authorise the use of the invention by any interested party, as a licensee.

These licences are known as licences of right and allow the owner to benefit from a reduction in annual fees (which are reduced by half), whilst also releasing the owner from the obligation to exploit the invention.

04 Searches

49. Is it advisable to request a search of prior patents and/or utility models before filing an application?

Yes. Before filing an application, it is advisable to do a search to discover previously published documents that describe an equal or similar invention. This will give you a sense as to whether the invention is novel.

50. What type of searches can be done?

There are a wide and diverse range of searches available: search by applicant, by patent family, by document number, by technical sectors, by keywords, by priority number or by any other profile determined by the applicant.

51. If no equal or similar patent or utility model is found in the search, can I be sure that the application will be granted and that I will not infringe other patents or utility models when I commence exploitation?

No. The search for equal or similar patents published previously can serve to provide fairly extensive knowledge about what has been protected, but it cannot guarantee that the invention is going to be granted or that the rights of third parties will not be violated if exploitation commences.

52. What services does the SPTO offer for performing searches and obtaining information?

The SPTO places a wide variety of services at the user's disposal, which can be grouped as follows:

• Publications available on the SPTO website. On a daily basis the SPTO publishes the Spanish Official Industrial Property Gazette, other specialist publications (Technology Watches) and monographs

• Databases created by the SPTO, which users can access online free-of-charge or in person at the SPTO head office

• SPTO Technological Information Services. Chargeable services that include retrospective searches of national and international databases and customised technological reports. These reports do not pre-judge the decisions that the SPTO or a foreign patent office may adopt if a patent application is filed to protect the invention in question or if a court has to decide

For further information about these services, please contact the SPTO Publications Office.

05 Protection abroad

53. Do patents or utility models granted in Spain protect an invention abroad?

No. The invention is only protected in Spain.

In countries where the invention is not protected, the technology is considered to be in the public domain, meaning that anyone is therefore free to exploit it. It is therefore extremely important to seek patent protection in all of the countries in which you wish to trade an invention.

54. How can the invention be protected abroad?

Protection abroad is obtained in several ways:

• By filing an application in each country where protection is desired

• By filing an application through the SPTO in accordance with the European Patent Convention and designating the countries where protection is desired. Once the European patent is granted, it will have to be validated in each designated state by paying the corresponding fee and submitting a translation of the patent into the official language of that state

By filing an international application through the SPTO in accordance with the Patent Cooperation Treaty (PCT). By virtue of article 22 of the PCT, the applicant is required to submit the translation of the international application and pay the filing fee within a period of thirty months, to count from the priority date. In this regard, some states are bound by the former wording of art. 22, i.e. a period of 20 months. These states are: Luxembourg, Uganda and Tanzania. However, other states have stipulated a term of more than 30 months. For further information, please see the different terms on the WIPO website, at the following address: http://www.wipo.int/pct/es/texts/time_limits.html

55. What countries are members of the European Convention and PCT?

As of 2012, 38 countries are party of the European Patent Convention: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, Former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, United Kingdom. Furthermore, both Bosnia and Herzegovina and Montenegro accept these applications, meaning that protection can be obtained in 40 different countries.

The member countries of the PCT are the following: Albania, Algeria, Angola, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Barbados, Belarus, Belgium, Belize, Benin, Bosnia and Herzegovina, Botswana, Brazil, Bulgaria, Burkina Faso, Cameroon, Canada, Central African Republic, Chad, Chile, China, Colombia, Comoros, Congo, Costa Rica, Croatia, Cuba, Cyprus, Czech Republic, Democratic People's Republic of Korea, Denmark, Dominica, Dominican Republic, Ecuador, Equatorial Guinea, Egypt, El Salvador, Estonia, Finland, Former Yugoslav Republic of Macedonia, France, Gabon, The Gambia, Georgia, Germany, Ghana, Granada, Greece, Guatemala, Guinea, Guinea-Bissau, Honduras, Hungary, Iceland, India, Indonesia, Ireland, Israel, Italy, Ivory Coast, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao People's Democratic Republic, Lesotho, Latvia, Liberia, Libya, Liechtenstein, Lithuania, Luxembourg, Madagascar, Malaysia, Malawi, Mali, Malta, Mauritania, Morocco, Mexico, Monaco, Mongolia, Montenegro, Mozambique, Namibia, Netherlands, New Zealand, Nicaragua, Niger, Nigeria, Norway, Oman, Papua New Guinea, Peru, Philippines, Poland, Portugal, Qatar, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, Saint Kitts and Nevis, San Marino, Saint Lucia, Saint Vincent and the Grenadines, Sao Tome and Prfncipe, Senegal, Serbia, Seychelles, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sri Lanka, South Africa, Sudan, Sweden, Switzerland, Swaziland, Syrian Arab Republic, Thailand, Tajikistan, Togo, Trinidad and Tobago, Tunisia, Turkmenistan, Turkey, Uganda, Ukraine, United Arab Emirates, United Kingdom, United Republic of Tanzania, United States of America, Uzbekistan, Vietnam, Zambia, Zimbabwe. (Total: 144 countries, according to SPTO sources, updated as of 1 January 2012).