In April, the Government passed the Draft Bill of the Patent Act containing a complete revision of the current system, which shall substitute the existing act, dating back to 1986.
The basic purpose of the draft bill is to assimilate the regulations into international legislation, updating them in line with current changes and context, and also to boost the Spanish patents system with the creation of solid patents and the consolidation of the role of innovation as the focal point for strengthening the competitiveness of the Spanish economy and Spanish companies.
The following points contain the main developments of the legal reform:
1. Reduction in official fees and speeding-up of procedures.
With the new act, the official fees for a patent application and search are reduced by 50% for entrepreneurs and SME’s. Furthermore, administrative charges are lowered and the formalities for the granting of patents are facilitated.
2. Introduction of a single procedure with examination of the novelty and inventive step.
The draft bill anticipates the suppression of the current system of granting patents without prior examination, by way of the introduction of a single procedure under which novelty and inventive step shall be examined of its own motion, which shall contribute to solid and quality patents, assimilating the Spanish patent system to the European Patent Convention. With this introduction, the current situation in which “strong patents” and “weak patents” coexist, shall be overcome.
3. Inclusion of new patentable substances.
Substances or compositions already known for their use in medicines or new therapeutic applications shall become patentable, although vegetal, animal, biological procedures and surgical or therapeutic treatments are excluded.
4. Incorporation of rules relating to the application for and obtaining of Supplementary Protection Certificates.
The new law expressly incorporates Supplementary Protection Certificates, which are certificates which extend, for the term of five years, the protection granted to the patent of a pharmaceutical or plant health products, in order to compensate for the time lapse during which the patent holder was unable to exploit the patent because the patent was pending the receipt of the regulatory approval for commercial purposes.
5. New regulation of obligatory licences
The reform simplifies the regulation of the so called obligatory licences relative to those patents, which for reasons of public interest, their holder is obliged to grant licences, such as, for example, the granting of obligatory licences on patents relative to the manufacture of pharmaceutical products destined for exportation to countries with public health problems.
6. Important changes to utility models (worldwide novelty)
The Draft Bill renews the system in force in relation to utility models, by assimilating it to the patent system, since it requires worldwide novelty for inventions protected by the utility model system. In this way the requirement for novelty exclusively on a national level, as per the current legislation is modified, in accordance with recent case law in Spain.
With regard to the inventive step, the system of the 1986 Patent Act, which required a lesser justification of the inventive step, is not modified, therefore the inventive step shall be granted when the state of the art is not very evident to an expert in the field of the invention.
At the moment, the draft bill is pending the corresponding reports from state organisms prior to parliamentary control, therefore the exact date of passing is as yet unknown.
Vilá Abogados
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24th October 2014
