Reforms To Spanish Patent Law Promote Filings At National Level

On 11 April 2014, the Spanish Council of Ministers approved a draft law reforming the current Spanish Patent Law of 1986. The reform aims to reconcile the regulation with the international framework, strengthen the Spanish patent system and make it easier and faster to obtain solid patent titles in Spain. It contains a few notable changes.

According to the Draft Law Explanatory Preamble, a reason motivating the large reforms in the framework is the fact that currently more than 90 percent of the patents protected in Spain are filed through the European Patent Office (EPO) or the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization.

The reforms seek to eliminate comparative disadvantages with these international systems and to promote protecting inventions in Spain through the national route.

The Spanish Minister of Industry, Energy and Tourism, José Manuel Soria, explained during the 11 April press conference, held after the Council of Ministers meeting, that the main objectives of the draft law are to simplify patent grant procedures in Spain, promote innovation and harmonise the law with the provisions of the Munich Convention on the Grant of European Patents and the Patent Cooperation Treaty.

The minister said the reforms on the granting system aim to allow Spain to issue patent titles of better quality, comparable to those granted in other European countries.

Likewise, the Report on the Draft Patent Law, issued by the Spanish Council of Ministers, stressed the importance of having a solid patent system; to improve the image of the Spanish patent, and be able to promote the national route as an attractive alternative for businesses, institutions and entrepreneurs wishing to protect their inventions in Spain.

The reforms proposed by the draft patent law include a 50 percent reduction in application and search fees for entrepreneurs and small and medium-sized enterprises, as well as changes in the regulation on employees’ inventions, compulsory licences, granting procedures and supplementary protection certificates for medicinal products.

Other changes seek to harmonise filing date requirements with the Patent Law Treaty, decrease administrative burden, change the time to present oppositions from before to after the patent granting, and overall, to speed up the procedures to protect inventions in Spain.

Regarding employees’ inventions, the draft law does not make substantive changes to the rules for inventions produced during the execution of an employment contract, which provides the inventing activity.

Nonetheless, in the case of mixed inventions, where an employee not specifically hired to invent produces an invention using the knowledge gained within the company or the means provided by the company, the reforms clarify the conditions for exercising rights. According to the Draft Law Explanatory Preamble, Title IV on employees’ inventions aims to create a better balance between the employee’s duty to inform about the invention and the employer’s duty to respond and carry out its commitments.

Title V of the draft law is one of the pivotal points in the reform. This Title regulates patent filing and granting as well as opposition and appeal procedures. It also includes provisions to implement the European regulation on supplementary protection certificates for medicinal products; (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 and Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996.

An important reform is made in the patent granting procedures. The draft law proposes to replace the current ‘a la carte’ or optional examination system, by a system demanding the mandatory examination of the inventions’ novelty and inventive step.

Under provisions of the current Patent Law 11/1986, applicants may choose between two patent-granting procedures. The general procedure enables applicants to obtain patent protection after an examination of the application’s formal requirements and general patentability conditions, without examining novelty or inventive step.

The general procedure includes a report on the invention’s state of the art, which contains a preliminary and non-binding opinion on elements relevant to assess novelty and inventive step. Nevertheless, patents are granted independently of the content of the report.

The granting procedure with prior examination adds to the general procedure, the examination of the adequacy of the invention’s description, as well as the evaluation of novelty and inventive step.

The Draft Law Explanatory Preamble explains that the objective is to introduce a more integrated and flexible model, in which the technical examination, prior art search and written opinion are part of the same procedure, and linked to the patent granting decision. The Report on the Draft Patent Law, issued by the Council of Ministers, said the reforms in the patent granting proceedings will benefit legal certainty and result in patent titles of better quality.

New Disclosure of Origin Requirement

Title V of the draft law also introduces a new filing requirement for inventions concerning biological material of animal or plant source. With the entry into force of the new regulation, applicants will be required to disclose the geographical origin, or source of origin of any biological material, of animal or plant source, used in their inventions. The information disclosed does not prejudge the validity of the patent, it says.

Another important change can be found in the new preliminary provisions. These expressly include the supplementary protection certificates for medicinal products among the titles protected by the draft patent law.

The purpose of a supplementary protection certificate (SPC) is to extend the protection afforded by a patent for five additional years in order to compensate the period of time between the filing of an application for a new medicinal product and the authorisation to place it on the market.

The aim of the certificates is to guarantee sufficient protection for the development of medicinal products and to encourage pharmaceutical research. Chapter IV of Title V of the draft law regulates aspects of the SPCs that the European regulation leaves to domestic law, including filing, processing and maintenance of SPCs in Spain.

With regards to the compulsory licensing system, the draft law rearranges and simplifies its regulation in Spain.

The reforms remove a number of provisions related to the proof of the obligation to work a patent related to pre-TRIPS Agreement concepts. TRIPS is the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights.

As well, in line with the Regulation (EC) No 816/2006 of the European Parliament and of the Council of 17 May 2006, the draft law includes within the conditions for issuing compulsory licences, the manufacture of pharmaceutical products for export to countries with public health problems.

On the other hand, the draft regulation eliminates export necessities as valid ground for granting compulsory licenses and keeps unchanged grounds of failure or insufficiency of working of the patented invention, dependency of patents, and existence of reasons of public interest. The procedure to grant compulsory licences is simplified and the supplementary protection certificates for medicinal products are expressly included in the compulsory licensing system.

After its final approval by the Spanish Congress and formal endorsement and enactment by the King, the new Spanish law on patents will come into force six months after its official publication in the Official Bulletin of the State.

The new law will repeal the current Patent Law No. 11/1986 and empower the Government to issue regulations enforcing the new provisions. Legal actions initiated before the entry into force of the new regulation shall be continued under the procedures they were commenced. Likewise, the draft Transitional Provisions will establish that patent titles granted under law No. 11/1986 will remain governed by the provisions in such law. Some of the rules on the new regulation shall however apply to these.

Angela Garcia M. is a guest contributor to Intellectual Property Watch. She holds a law degree from the Universidad de Lima, in her home country of Peru, a master’s degree in intellectual property law from the Universidad de Alicante-Spain, and a master’s degree in business administration from the Business School Lausanne-Switzerland. Her experience includes providing legal support to INDECOPI, the Peruvian IP Office, Organisation for a Geographical Indications Network, and the World Intellectual Property Organization.