Revisions to the Patent Act: a necessary step to foment inventing in Spain

Nearly 30 years after passage of the current Patent Act, the legislation currently in force plainly stands in need of revision to bring it up to date with the advances made by society since that time. With this in mind, the Spanish Patent and Trademark Office (SPTO) has proposed a revised Patent Act, and a second draft of the proposed bill (in Spanish) was published this past month of December.

Lately, one of the most controversial aspects of the current system is what is known as the alternate route to grant, where the applicant may choose between the traditional granting procedure, in which all patent applications mature to grant, and the granting procedure involving preliminary examination, in which SPTO examiners examine the patent application, which will be granted only if the invention as claimed is deemed to fulfil the requirements of novelty, inventive step (non-obviousness), and industrial applicability. Unfortunately, this latter granting procedure has never taken hold, and today just 8 % of applications follow the route involving examination of the application. This shifts the burden of having to cancel patents that should never have been granted onto society, competitors, and the courts.

This is probably the main change in the draft bill, and from enactment substantive examination of patent applications will be mandatory, so that patents will only be granted where the invention claimed fulfils the legal patentability requirements.

Still, it is by no means the only change included in the new draft bill, which would put in place quite a few new provisions intended to have far-reaching effects on patent law by streamlining the system, simplifying requirements, doing away with formalities, and avoiding involuntary loss of rights.

Some of the most important of these changes are:

1. Simplifying the requirements for according a filing date by allowing first filings to be made in any language, though subsequently filing a Spanish translation would be compulsory.
2. Bringing forward the prior art search to the filing stage, hence the search fee will have to be paid at the time of filing.
3. Explicitly declaring medical uses or new therapeutic applications of known substances to be patentable.
4. Shifting the opposition stage to after grant.
5. Implementing new administrative procedures for revoking patents and for limiting them at the request of the patent holder, who will be entitled to limit the scope of the claims at any time during the legal lifetime of a patent.

Patents are not the only rights to be slated for significant changes: amendments are also being proposed for utility models, a mainstay of small and medium sized enterprises (SMEs) in Spain.

The novelty requirement for utility models is to be brought into line with the novelty requirement for patents, thereby removing a source of uncertainty in existing law. Conversely, the degree of inventive step will not be changed and will continue to be lower than required for patents. At the same time, the range of inventions that can be protected as utility models will be enlarged to include chemical substances, biotechnology inventions and pharmaceutical compositions excluded.

These changes could make utility models into an interesting option as, for instance, a means of obtaining rapid protection while a patent is being prosecuted more slowly.

And lastly turning to fees, the draft bill also provides for a 50-% reduction in the filing, search, and examination fees for certain inventors and SMEs, to make it easier for them to protect their inventions.

In short, the changes are intended to bring the patent system up to date and should be a step forward in providing protection for innovation in Spain.

Author: Francisco J. Saez

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