NEW SPANISH PATENT ACT


The new Spanish Patent Act came into force, with effect from 1st April 2017, implementing some significant changes in the major issues of patent registration procedure.


1. The new Patents Act establishes a single procedure with a search report (and a written opinion) followed by a compulsory examination of novelty and inventive step. The prior art search will be now conducted at an earlier stage and the whole procedure will be more expedited so that the applicant may have time to decide whether to continue or not with the prosecution of the patent application and/or extend it abroad claiming priority.

2. Under the new Patent Act, all patent applications are subject to substantive examination. A request should be submitted within three months after the publication of the prior art report.

3. In order to speed up the procedure of grant, pre-grant opposition proceedings have been replaced by a post-grant opposition system. The opposition under the new system must be filed within 6 months following the date of grant.

4. The new Patents Act sets forth the possibility of patenting substances or compositions already known for their use as medicaments of new therapeutic applications, i.e. a second medical use patents.

5. Before the enactment of the new Patent Act, a claim can only be declared invalid in its entirety, but the new Patents Act foresees the possibility of partial invalidity of a claim. Furthermore, it will allow the applicant to request the limitation of one or more claims or the total revocation of the patent, with effects equivalent to invalidity.

6. The general term to file an answer to a legal complaint in Spain, including in patent proceedings, was currently 20 working days. The new Patents Act extends the term to answer a complaint (with or without a counterclaim) up to 2 months. The same term applies to answer a counterclaim.

7. The new Patent Act also introduced a new system of patent annuities payment. Annuities are payable after the patent grant counting from the 3rd year from the filing date. While previously the fee could be paid within three months before or one month after the due date, starting from April 2017 the fees will have to be paid within three months after the due date.

8. Historically, utility models have been widely used by Spanish companies. The new Patents Act not only maintains this title but also reinforces it. On the one hand, the new Patents Act provides that any kind of product or composition shall be protectable as utility model, with the only exception of pharmaceutical and/or biological substances and compositions. Thus, chemical products and compositions shall be protectable as utility models. On the other hand, the novelty standard required for the valid grant of utility model shall be the same as that required for a patent, i.e. worldwide novelty. On the contrary, the old Patents Act only required novelty in Spain.