In a global economy there is an increasing need for companies to obtain protection for the same invention through patents in different countries.
According to figures from the OECD, which use an indicator based on the percentage of priority applications for which protection extends to other regional and national offices (see graph), there is an increasing tendency among Spanish companies to protect their inventions internationally, particularly using the International Patent and European Patent (European Patent Office) protection channels.
Individual country analysis indicates that the most popular destinations are China, United States of America, Canada and Japan. This behaviour is very similar to that of our neighbouring countries.
To protect an invention outside Spain, there are a number of options and applicants must decide which is the best option for them based on a number of criteria: the geographic location where protection is sought, the language in which the application will be processed, the cost they are able to assume or the timeframe in which they wish to obtain the patent.
To facilitate access to international protection systems, the SPTO offers financial support for patent applications abroad through a programme of grants which are offered annually. For detailed information on these grants, go to the following section:
Home > Industrial Property > Grants and Subsidies
There are a number of internationalisation options:
1.- The PCT channel. (Additional information at: Inventions/International PCT Applications)
This system initiates the procedure simultaneously in more than 40 countries through a single application.
Spanish applicants have an important advantage as the SPTO is an International Search and International Preliminary Examination Administration, which means that it can carry out all international patent-related procedures up to entry in the National Phase (month 30 from the priority date) in Spanish and in a way that is accessible.
This channel allows online applications and the files containing the description, claims and drawings can be submitted in PDF or XML format using the PCT-Safe Editor programme. Depending on the method used, significant discounts can be applied to the filing fees, so the SPTO recommends using the online filing method.
It is important to point out that for certain Latin American countries the SPTO offers discounts of 75% on the international search fee
The fast-track system offered by the English patent office is especially worth mentioning. Thanks to this system, if you have filed an International Patent application that has received a positive patentability report, when you apply to enter the national phase in the United Kingdom a fast track system will be applied.
Additional information at:
2. The European Channel. (Additional information at: Inventions/European patents)
This channel leads to the awarding of a patent that may be valid in up to 38 European countries (member countries in May 2011).
This application can be filed in Spanish, in which case it is eligible for a 20% discount on the filing fee (for any of the online or paper categories) and another 20% discount on the examination fee (Rule 6.3 of the European Patent Convention). This application must be translated into one of the official languages within three months.
If it is a EuroPCT application, that is, an international patent application that has entered a regional phase in Europe and for which the international search report has been carried out by the SPTO, then the Supplementary European Search Report fee will be reduced by 940 euros, which is equivalent to a discount of more than 50% (published in the PCT Applicant's Guide – National Phase – National Chapter – EP http://www.wipo.int/pct/guide/en/gdvol2/annexes/ep.pdf)
Furthermore, on 28 July 2010 the European Patent Office published news of changes to the European Patent Convention (Rules 141 and 70 of the EPC) stating that work carried out by certain national offices, including the SPTO, on a patent application can be subsequently used by the EPO in the processing of European patents, which gives priority to this national application.
3. Applying for patents through national offices.
In addition to international or European patent applications, an applicant may opt to make individual patent applications in the countries where he or she seeks to protect his or her invention.
In this case the applicant must take into account the applicable regulations in each country.
4. Patent Prosecution Highway (PPH).
Following strategic lines to promote internationalisation and improve the management processes as set out within the framework of the Plan for the Promotion of Industrial Property in Spain (IP Plan), the Spanish Patent and Trademark Office (SPTO) has established a series of bilateral agreements with the offices of the United States of America (USPTO), Canada (CIPO), Japan (JPO), Finland (NPPR), Portugal (INPI) and Russia (Rospatent).