Tag Archives: patents

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Spain’s New Patent Act: The Key Points

On July 25th, the Spanish Official State Gazette (BOE) published the new Patent Act (“PA”) (“Ley 24/2015, de 24 de julio, de Patentes”), which will substitute the current legislation on April 1st, 2017. The main aim of the new Act is to simplify the patent protection of innovation and promote legal certainty by establishing a single method of patent granting, which requires a prior examination of novelty and inventive step.

The most evident change concerns the remodeling of the patent granting procedure. The new PA approaches the harmonization, as proposed in the Patent Law Treaty, by simplifying the requirements to obtain the filing date of the patent application. These requirements include the obligation of informing about the geographical origin or the source of origin of the biological material to which the invention refers. In order to avoid discrimination towards individuals who decide to file the application in Spain first, the Act introduces a major change by recognizing the internal priority, which will allow them to subsequently file improved or amended applications.

With regard to the grant procedure, the PA makes the most visible change by adopting the procedure integrating a preliminary or substantive examination of novelty and inventive step (non-obviousness) as the single system for granting patents. The conclusions drawn by the examiner upon technical evaluation will be reflected in a so-called “written opinion” and the interested party will be able to respond to the observations and objections that the examiner may have had and/or to continue the proceeding, carrying out a substantive. The substantive examination should prove whether the patent application and the invention fulfil the formal, technical and patentability requirements described on the PA. In order to accelerate the procedure, the new PA substitutes the former system of pre-registration opposition with a new system of post-registration opposition. However, the new procedure still allows for the observations of third parties, who will be able to make any observations regarding the patentability of the invention once the application is published. This new system provides the applicant with the necessary information to decide whether or not to amend or maintain the application and /or to patent abroad within the period of priority.

Although the changes on the application procedure are the most noticeable, the PA also modifies other aspects concerning patents, such as:

  • Regarding European Patents, the PA introduces the amendments adopted by the Act revising the European Patent Convention, by admitting the possibility of patenting known substances or compositions for their use as medicine or for new therapeutic applications.
  • With regard to claims for infringement of patent rights, the PA introduces coercive compensations to guarantee the cease of the infringing activity.
  • The new PA will allow the partial invalidity of a patent claim during the invalidity proceedings. Besides, the patentee can revoke or limit the scope of the patent by modifying its claims at any time during the patent’s legal lifetime.
  • A special feature is introduced concerning the procedural rules. The new PA adjusts the procedural deadlines due to the complexity of the patent disputes, the extraordinary importance of the expert opinions and the need of having them at one’s disposal and making use of them in order to guarantee the right of defense of the defendant. The general deadline for filing the statement of defense, formulate a counterclaim and or answer the latter, will be increased from the current twenty days to two months.

The new PA does not forget patent’s little sister -utility models- and adjusts its regulation aiming to adapt it to the present and to assimilate it to their situation in other European countries. The first relevant change is the levelling of the relevant State of the Art to the one required for patents, i.e. the innovation required for the concession of a utility model will be the same as the required for patents. Another relevant change is that the range of what can be protected as a utility model will be increased and, therefore, will include chemical products, substances or compositions, except for those involving biological materials and pharmaceutical substances and compositions. Finally, since utility models are granted without examination, owners aiming to enforce a utility model under the new law will have to provide for a search report on the State of the Art.

 

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How Intellectual Property Impacts Your Business

The European Observatory on Infringements of Intellectual Property Rights and the European Patent Office have carried out studies on the contribution of the main intellectual property rights (IPR) to the economy in the European Union. The purpose of these studies is to provide evidence about the value of intellectual property (IP). The impact of the IP has been assessed in two different studies.

The first study, released on September 2013, analyzed the main IPR intensive industries and their contribution to the economic performance and employment in the European Union. The results indicated that about 35 % of jobs in the European Union rely on IPR intensive industries, approximately 26 % of all jobs in the EU are provided directly by these industries and 9 % of all employment in the EU comes directly from them. Furthermore, the study revealed that about 39 % of total economic activity in the EU is generated by IPR intensive industries.

The latest study, released on June 2015, deals with an economic analysis of the main IPR and the firm’s performance in Europe. The new study has found out that European companies owning IPR achieve better economic performance than their competitors not owning IPR. The report shows descriptive statistics which exhibit the differences between companies owning and not owning IPR. The results of the analysis clearly demonstrate that the ownership of, specifically, patents, trademarks and designs, is strongly associated with improved economic performance at the level of the individual company.

Among other interesting patterns, the results show that the revenue per employee for owners of IPR is 28.6 % higher than for firms not owning IPR. This revenue is largest for companies owning designs at 31.4 %, followed by trademark owners and patent owners. This relationship between IPR and revenue per employee is even stronger for small and medium-sized enterprises (SMEs). For instance, when taking into consideration all firms subject to the study, the revenue for employee for firms owning IPR is 28 %. However, with respect to SMEs, this positive relationship reaches 32 %. Nevertheless, the statistics show that SMEs do not seem to be aware of how beneficial it is to own IPR since only 9.1 % of SMEs own designs, trademarks or patents.

Besides, IPR owners employ almost 6 times as many employees as companies not owning IPR and the salaries on companies owning IPR are almost 20 % higher than by firms that do not own IPR. The highest salary corresponds to patent owners at 40.6 %, followed by designs at 23.0 % and trademarks at 18.8 %.

In conclusion, these studies clearly present the positive impact of IP in the economy of the European Union. Now, with the results of these studies, the European Observatory on Infringements of Intellectual Property Rights and the European Patent Office aim to raise awareness among European citizens about the value of intellectual property.