New Year - New Patents Act for Spain
The IPKat is always excited by a new patent law, and so is delighted to have received from Katfriend Elena Molina, abogada at Intangibles in Barcelona, this account of the new law in Spain. Over to Elena...
2015 has been a memorable year in the history of the patent law in Spain: on 25 July 2015 the new Patents Act (Act 24/2015, of 24 July) was published in the Spanish official bulletin. The new Patents Act will replace the Patents Act 11/1986, in force since 1986. Patent lawyers and attorneys will have some time to become familiar with the number of changes introduced by the new law as the new Patents Act will not enter into force until 1 April 2017. This generous vacatio legis will also allow public and private entities as well as inventors to adjust their patent protection and/or enforcement strategies.
In a nutshell, the new Spanish Patents Act will introduce a number of changes, both in prosecution and enforcement proceedings. The main changes are the following:
• Procedure of grant with examination of the patentability requirements
The old Patents Act featured a dual system where the applicant had two options: either following the general procedure (grant without substantive examination of novelty and inventive step) or requesting a special procedure that included substantive examination of the patentability requirements. In practice, most Spanish patents were granted without examination. This dual system was an exception worldwide, including the PCT International Authorities.
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 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.
• Post-grant oppositions
In order to speed up the procedure of grant, pre-grant opposition proceedings have been replaced by a post-grant opposition system.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.
• Second medical use patents
The new Patents Act sets forth the possibility of patenting substances or compositions already known for their use as medicaments of new therapeutic applications.
• Partial invalidity of a claim. Limitation and revocation procedure
Currently, 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.
• Extension of the term to file an answer to a legal complaint
The general term to file an answer to a legal complaint in Spain, including in patent proceedings, is 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.
• Coercive measures
The new Patents Act foresees the possibility that Spanish courts may impose on the infringer the payment of a coercive indemnity to ensure the cessation of infringing activities. Contrarily to trademark and design law, the new Patents Act does not specify the amount of such indemnity nor does it establish a cap.
• Quantification of damages
Currently, damages in patent infringement proceedings must be determined and quantified prior to the first instance judgement. In most cases, this implies the need to conduct an analysis of the accounting books and the financial and commercial documents of the alleged infringer before having a declaration of infringement. This implies extra costs, further complexity during the first instance proceedings and the risk of disclosure of trade secrets that is not justified where the infringement actions are dismissed. Therefore, the new Patents Act provides that damages in patent infringement proceedings shall be determined and quantified in separate proceedings following a judgment ruling the existence of infringement.
• Protective letters
In several European jurisdictions, including Germany, the Netherlands, Belgium and Switzerland, where a person considers that there is a risk that an application for provisional measures, eg. injunction, against him as a defendant might be lodged before the courts, the law entitles him to file a protective letter before such courts to avoid the effect of the potential provisional measures. This right is also foreseen before the Unified Patent Court. The new Patents Act introduces the possibility to file protective letters in Spain.
• Utility models
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 an utility model shall be the same as that required for a patent, ie. worldwide novelty. The old Patents Act only required novelty in Spain.
Other main changes in utility models are: (i) extension of the period to file an opposition against a utility model application from 2 to 4 months (utility models, unlike patents, will continue to have pre-grant opposition proceedings); (ii) compulsory request of a prior art search report before enforcing exclusive rights conferred by the utility model.
The aim of the new Patents Acts is fostering research, development and innovation in Spain by making patents and utility models more attractive to inventors, universities and companies. Most IP practitioners think that the new Patents Act is a big step but probably not enough to achieve this goal as this should be accompanied by more ambitious measures to improve the patent court system. In any event, we start the New Year with a new law and this is something to celebrate (even though we must wait until 2017 to open the gift).
In a nutshell, the new Spanish Patents Act will introduce a number of changes, both in prosecution and enforcement proceedings. The main changes are the following:
• Procedure of grant with examination of the patentability requirements
The old Patents Act featured a dual system where the applicant had two options: either following the general procedure (grant without substantive examination of novelty and inventive step) or requesting a special procedure that included substantive examination of the patentability requirements. In practice, most Spanish patents were granted without examination. This dual system was an exception worldwide, including the PCT International Authorities.
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 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.
• Post-grant oppositions
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.
• Second medical use patents
The new Patents Act sets forth the possibility of patenting substances or compositions already known for their use as medicaments of new therapeutic applications.
• Partial invalidity of a claim. Limitation and revocation procedure
Currently, 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.
• Extension of the term to file an answer to a legal complaint
The general term to file an answer to a legal complaint in Spain, including in patent proceedings, is 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.
• Coercive measures
The new Patents Act foresees the possibility that Spanish courts may impose on the infringer the payment of a coercive indemnity to ensure the cessation of infringing activities. Contrarily to trademark and design law, the new Patents Act does not specify the amount of such indemnity nor does it establish a cap.
• Quantification of damages
Currently, damages in patent infringement proceedings must be determined and quantified prior to the first instance judgement. In most cases, this implies the need to conduct an analysis of the accounting books and the financial and commercial documents of the alleged infringer before having a declaration of infringement. This implies extra costs, further complexity during the first instance proceedings and the risk of disclosure of trade secrets that is not justified where the infringement actions are dismissed. Therefore, the new Patents Act provides that damages in patent infringement proceedings shall be determined and quantified in separate proceedings following a judgment ruling the existence of infringement.
• Protective letters
In several European jurisdictions, including Germany, the Netherlands, Belgium and Switzerland, where a person considers that there is a risk that an application for provisional measures, eg. injunction, against him as a defendant might be lodged before the courts, the law entitles him to file a protective letter before such courts to avoid the effect of the potential provisional measures. This right is also foreseen before the Unified Patent Court. The new Patents Act introduces the possibility to file protective letters in Spain.
• Utility models
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 an utility model shall be the same as that required for a patent, ie. worldwide novelty. The old Patents Act only required novelty in Spain.
Other main changes in utility models are: (i) extension of the period to file an opposition against a utility model application from 2 to 4 months (utility models, unlike patents, will continue to have pre-grant opposition proceedings); (ii) compulsory request of a prior art search report before enforcing exclusive rights conferred by the utility model.
The aim of the new Patents Acts is fostering research, development and innovation in Spain by making patents and utility models more attractive to inventors, universities and companies. Most IP practitioners think that the new Patents Act is a big step but probably not enough to achieve this goal as this should be accompanied by more ambitious measures to improve the patent court system. In any event, we start the New Year with a new law and this is something to celebrate (even though we must wait until 2017 to open the gift).
