On April 1st of this year, significant changes are made to some of the requirements that have marked the Spanish patent system for more than 30 years.

Patents

  • The patent granting procedure is radically modified, establishing the obligation to carry out the Substantive Examination (the General Grant Procedure disappears)
  • Payment of the RSA preparation fee is moved forward to the time of patent application
  • The background search is moved forward and the procedure is expedited, providing the applicant with the information they need to decide whether to maintain their application and/or to patent abroad within the priority period
  • The opposition proceeding by third parties against the grant of the patent becomes post-grant

Utility Models

  • The novelty required to validly grant a utility model will be the same as that required for invention patents
  • The scope of protection for utility models is broadened, thus protecting any product or composition, and therefore chemical products, except for any that are related to biological material, as well as pharmaceutical substances and compositions

Common provisions

  • The obligation to file inventions made in Spain with the SPTO is established; if the applicant has their home residence, registered office or regular residence in Spain, it will be assumed, failing evidence to the contrary, that the invention was made in Spain. By failing to comply with this requirement, the patent shall not be in effect in Spain
  • The patent holder shall voluntarily limit the patent by modifying the claims or completely revoking it
  • The so-called preliminary injunctions are introduced
  • The partial declaration of invalidity of a claim of a patent shall be permitted
  • Coercive compensation is established to guarantee the cessation of infringing activity

... introducing several developments that affect both general matters (such as those that affect inventions by employees or inventions by research staff, fee processing for universities and entrepreneurs, extension of the period to respond to claims or formulate counterclaims...) or more specific matters, for example, in the pharmaceutical sector with better management of the Supplementary Protection Certificates, inclusion of the Bolar provision, patentability of first and subsequent medical uses, ...

All of these changes imply a completely new outlook, with many modifications at a substantive level as well as a procedural level, which makes first-level technical consulting services necessary to achieve protection of your Industrial Property assets. Therefore, at Clarke, Modet & Co. Spain, we offer you comprehensive management of your Industrial and Intellectual Property rights and their related rights as one of the largest specialized groups worldwide in Spanish- and Portuguese-speaking countries.

Please, don't hesitate to contact us if you need further information.

Clarke, Modet & Co - SPAIN

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.