Friday 9 October 2015

180º turn in Spain's system of granting patents (II)

The different stages in the prosecution of Spanish patent applications have up to now started with an initial examination as to certain formal aspects along with certain technical features and clarity of the invention as claimed, followed by a search of the potentially anticipatory prior art preceding the filing date of the application, which is carried out by the Spanish Patent Examiner.

Spain's current Patent Act already prescribes that to be patentable an invention should be new and inventive (i.e., non-obvious) over all the prior art available up to the application's priority date.

This prior art search, called, in English translation, the "report on the state of the art", encompasses all documents disclosed by the Spanish Examiner which, in his or her opinion, could pose an obstacle to the patentability of the invention as claimed, either by reason of lack of novelty or because the invention is obvious in view of the prior art.

Paradoxically, however, as things currently stand, unless the applicant specifically requests the Patent Office to carry out an optional patentability examination, the application will automatically proceed to grant even if the Spanish Examiner has misgivings about an invention's patentability or, indeed, directly finds the invention to be unpatentable.

The resulting patent will, of course, be at risk of possible nullity proceedings in the Spanish courts at the request of any interested third party, and if the court agrees with the Examiner's opinion, the patent will most likely be ruled to be null and void, i.e., never to have had effect at all. This entails costs for the applicant, for third parties, and for society as a whole, and this situation could be mitigated if patents were granted only if they successfully passed a substantive patentability examination by the Spanish Patent Office, currently only optional.

Requesting a patentability examination was introduced as an option for Spanish patent applications in the early 2000's in the hope that it would gradually become common for applicants to request examination, particularly where the search report had been negative, in an endeavour to persuade the Examiner to reconsider the initially adverse opinion. Things have not, however, gone as intended, and today the patentability examination is requested for fewer than 10 % of patent applications, even where the search report is unambiguously unfavourable. This means that the validity of more than 90 % of the patents currently in force is potentially suspect.

The new Patent Act, Act No. 24/2015, turns this situation on its head by making the patentability examination compulsory. Accordingly, the SPTO will grant only those patents which in the Examiner's view fulfil the patentability requirements, including novelty and inventive step (non-obviousness).

Applications that do not fulfil requirements will be rejected and hence will never mature to grant. This will considerably strengthen the presumption of validity of granted Spanish patents and hence the legal certainty of patent holders, third parties, and society as a whole.

The new Spanish Patent Act will also change other important provisions of current patent law, such as the types of inventions entitled to protection as utility models, which will now include non-pharmaceutical chemical compositions, and the relevant prior art for assessing the patentability requirements for utility models, introducing the same absolute novelty requirement as for patents. Prosecution will also be streamlined and shortened, with the search report to be issued during an application's priority year to enable timely decisions with respect to foreign filings.

In short, the new Patent Act is a much needed modernization of the existing Act, placing Spain's legislation on a par with patent law in the most advanced countries, and it should result in stronger patents, greater legal certainty, and faster prosecution than under the existing system.

II. 180º turn in Spain's system of granting patents  (Francisco J. Sáez)
III. The importance of professional advice (Francisco J. Sáez)
IV. Lawsuits under the new Patent Act (Antonio Castán)
V. Utility models under the new Patent Act (Pedro Saturio)

Author: Francisco Javier Sáez

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