Preliminary draft law on Patents

After a first reading, the Government has approved the preliminary bill of law on Patents which revises the legal framework for Industrial Property in Spain, currently covered by Law 11/1986 on patents. The aim is to equate the Spanish system with international regulations while strengthening it and establishing a legal framework that will encourage truly inventive, innovative activities.

The new law aims to promote and protect innovation in Spain, offering an attractive alternative for those who choose to protect their inventions through national channels. In addition, it offers a fast, efficient alternative to businesses, entrepreneurs, and public and private institutions in Spain for protecting their innovations with sound patents, removing comparative disadvantages with regard to European and international applications.

A solid patent system also prevents the creation of unjustified monopolies as the protection and exclusive right involved in a patent is only granted if the novelty is really proved. It also benefits private persons by guaranteeing the seriousness of patents, preventing technology bubbles and, in general, improving the image of Spanish patents.

Main new features

• Application and patent search fees are reduced by 50% for entrepreneurs and SMEs.
• The granting system changes, establishing a single procedure with a preliminary examination of the novelty and invention activity, which should give rise to better-quality patents that are comparable to those of neighbouring countries. The adoption of a single procedure leading to a single title will also improve legal certainty as the titles will have been through a double filter – a substantive examination, and possible opposition from third parties.
• Applicants will have access to relevant information allowing them to reach decisions on the possibility, amongst others, of patenting in other countries, thus allowing firms to establish strategies for globalisation.
• Fast-track granting of solid patents. This will reduce the administrative workload and will speed up procedures for protecting innovation by means of patents. In the case of utility models (for minor inventions), their scope is extended to include chemicals.
• The formal requirements for applications and other administrative procedures are harmonised with those used in international procedures, thus eliminating comparative disadvantages.
• The regime for employee inventions (those that occur within an employer-employee relationship) is clarified, making the procedure simpler and increasing legal certainty.
• Regulation of the so-called ‘obligatory licences’ is simplified. These are licences which, for reasons of public interest, must be given in all cases by patent holders to prevent an invention from remaining unexploited.
• Complementary Protection Certificates are expressly included among titles for protection. These Industrial Property titles extend for a period of five years the protection granted to a patent for a pharmaceutical or plant health product to make up for the longer period of time required by these products between granting of the patent and authorisation for sale.

The role of the SPTO

The draft bill of law establishes that the SPTO will be the only national institution to grant the date of submission to patents applying for it, and will also be the only institution to grant patents, thus guaranteeing market unity. The proposal also covers action by the Office and establishes that it will only be necessary to act through an Industrial Property Agent for applicants who are from outside the European Community, as is usually the case in most countries.

The SPTO will also be responsible for promoting and developing mediation and for acting as an institution for arbitration. And, in line with the legislation, it will hold the functions attributed to it by decree for resolving any conflicts relating to Industrial Property on matters that are not excluded from those to be freely decided upon by the parties in accordance with the law.

For further information, click here.