La nueva ley de patentes en España

On 25 July 2015, the Spanish Official State Gazette published the text of Act 24/2015, of 24 July 2015, on Patents. The Act will enter into force from April 1st, 2017.
This new Act intendeds to simplify and speed up the protection of innovation, to avoid the involuntary loss of rights for formal causes, to enhance the legal certainty and to adapt the Spanish legislation to the international regulations, such as the EPC 2000, or PLT.

The most significant changes are the following:

  • The granting procedure of patents has changed. The option of General Granting Procedure (i.e.: without substantive examination) has been eliminated. The substantive examination for patents will be mandatory.
    Together with the search report, a written opinion will be received as a first communication from the examiner. The applicant may reply to the comments and objections of the written opinion and amend the application when filing the request for substantive examination (if the applicant decides to continue with the procedure).
    The search report should be conducted within the priority first year.
    The payment of the search fee must be done when filing the patent application.
  • The requirements to obtain the filing date will be simplified. The requirements are the next:
    a) An indication that a Spanish patent is sought;
    b) Information identifying the applicant or allowing the applicant to be contacted;
    c) A description or reference to a single previous application.
    To obtain the filing date, any language other than Spanish is allowed for filing applications, the translation into Spanish will be necessary only post-filing.
  • The report on the geographical origin or source of origin of the biological material to which the invention relates will be mandatory.
  • Claiming internal priority will be possible.
  • The patentability of compositions for their use as medicines or for new therapeutic applications is expressly foreseen.
  • The so-called patents of addition are completely deleted.
  • The new Act makes an expressed distinction between the ‘Bolar clause’ and the acts carried out for experimental purposes, since they have different origin and purpose.
  • It is explicitly mentioned that the scope of the claims can be further interpreted bearing in mind the doctrine of equivalents.
  • There will be a 50% reduction for entrepreneurs (being small and medium-sized enterprises and independent inventors) on official fees.
  • The opposition procedure will not take place prior to the grant of the patent, but it will be a “post-granting” procedure, within a period of six months from the grant of the patent.
  • The declaration of partial invalidity of a claim will be allowed.
  • The voluntary revocation or limitation of the patent once granted will be possible.
  • The Supplementary Protection Certificates shall be considered as industrial property titles.
  • Coercive compensations are established to ensure the cessation of the infringing activity.
  • The calculation of infraction damages will be postponed until the so-called “execution phase.” This will avoid the disclosure of comercial secrets of a competitor, as well as the complexity and extra cost added to the determination of the damages in the “declaratory phase”, that is, before it has been established whether or not the patent has been infringed.
  • The scope to the utility models will be extended to any product or composition, including therefore also chemicals, except biological material and pharmaceutical substances and compositions.
  • For utility models, the state of the art that must be taken into account will be the same as in the case of patents (until now it was limited to what had been divulged in Spain). However, the threshold of inventive activity continues to be lower than in the case of patents.
  • In utility models, the exercise of the actions for the defence of the right is subject to obtain a report on the State of the art.
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