On July 25th, the Spanish Official State Gazette (BOE) published the new Patents Law, Law 24/2015 from the 24th of July, substituting the one currently in force (Law 11/1986). This new law will not come into effect until the 1st of April 2017.
One of the objectives of the new Law is to make it easier for Spanish innovators to obtain solid titles, since it has been considered that there is no justification, as is now the case, for a patent to be granted when the State-of-the-art Report reveals that the invention involved lacks novelty or inventive activity.
1. -The first and most "visible" change is related to the procedure for the granting of patents.
From the day this law comes into force, the previous procedure will be substituted for one that integrates the search by means of a technical examination whose conclusions will be reflected in the so-called “written opinion”.
This will be the first notice from the examiner, whose observations and objections can be answered by the interested party by asking for the substantive examination if the said party decides to continue with the proceedings; and they will consequently have the chance to modify the application to comply with legal requirements.
This said, and as a fundamental consequence of the same, the background search will be brought forward, which means that the procedure will be faster.
The applicant will be provided with the necessary and relevant information and can also decide whether or not to maintain the application and/or to patent abroad within the period of priority. For this reason, the payment of the search rates has also been brought forward to the moment when the patent application is presented.
2.- To make the grant procedure faster, prior oppositions are substituted by an opposition system, within a time-frame of 6 months from the granting of the patent; it is therefore a "post-grant" opposition and not "prior-grant" one as is now the case.
3.- The possibility of patenting known substances or compositions for their use as medicine or for new therapeutic applications is established expressly.
4.- Coercive compensations are established to guarantee the cease of the infringing activity.
Every action concerning the calculation and payment of the compensation resulting from an infraction will take place during the execution phase of the resolution on the matters of substance on which the infraction was appreciated, seeing as it was deemed that revealing the trade secrets of a competitor, as well as the added complexity and costs for the determination of the aforementioned amount of damages, would not be justifiable should acquittal decision was rendered.
5.- The declaration of the partial invalidity of a patent claim will be allowed, when it would, at this time, only is possible to invalidate the entirety of a claim. The title holder of the patent will also be permitted to voluntarily limit the same, by modifying the claims, or to abrogate it in full, with effects equivalent to invalidation.
6.- A special feature is introduced regarding the general stipulations of the Civil Procedural Act: given the complexity of this subject, the general deadline for responding to a lawsuit is increased from the current 20 days to 2 months, as well as to formulate a counterclaim or to answer the latter.
7.- The legal model of the so-called preventive/protective documents is created, in order for it to be used by those who foresee that precautionary measures may be presented against them with no prior hearing, in which case they may be heard before the judicial body or bodies deemed having jurisdiction in the said possible measures and be able to justify their position via a preventive defence document.
8.- The range of what will be protectable as a utility model increases, covering any product or composition and, therefore, also including chemical products, with the sole exception of those involving biological materials and pharmaceutical substances and compositions.
9.- The innovation required for the valid concession of a utility model will be the same as that required for invention patents, i.e. the so-called “absolute innovation” as opposed to the past legislation in which innovation is limited to that which is applied in Spain, the so-called “relative innovation”. In consequence, this circumstance will drastically toughen the requirements for the validity of utility models.
10.- It will be possible to oppose an application for a utility model prior to the concession, unlike that cited for invention patents, the period for opposition being increased from the current two to four months.
11.- Similarly, following the trend of providing a greater guarantee for the validity of titles granted and also to avoid maintaining unjustified monopolies based on titles of doubtful validity, it is established that those who are going to take legal action aimed at making more effective their exclusivity rights that arise from a utility model must first request the drafting of the state-of-the-art report.
And, given all the above, Spanish Law will come even closer to the legislation standards of countries which are more advanced in this field, i.e. USA, UK, Germany, etc.