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.