Thursday 14 January 2016

The new Patent Act (III) – The importance of professional advice

The new Patent Act, Act No. 24/2015, set to take effect on 1 April 2017, provides for far-reaching changes in the procedure for obtaining patents of invention in Spain in the future but at the same time ushers in new demands as well.

Earlier blog entries have dealt with the patentability requirements and the mandatory examination for all new applications filed after the new Patent Act and its Implementing Regulations have come into force. This means that applicants who up to now have made use of the general procedure for grant and hence are not used to replying to communications from the Spanish Patent Office raising objections to the patentability of their applications can expect to encounter new stumbling blocks to overcome during patent prosecution. Here are just a few examples of some of the substantive changes:
  • To begin with, Examiners will now be able to object that lack of clarity of the claims prevents him or her from carrying out a meaningful search of the prior art.
  • Further, applicants will need to bear in mind that the patentability of an invention can be vitiated by European patent applications designating Spain and published in Spanish and by PCT applications that have entered the national phase in Spain and were filed before the priority date of the application even if only published afterwards. Should this situation arise, it will bear on the novelty requirement but not on the inventive step requirement.
  • In addition, where an invention relates to either biological material, either animal or vegetable, the new Act requires the application to disclose the geographical origin or source, though that information will not prejudice the validity of the patent. 
  • The new Patent Act will also expressly define substances and compositions "for use as medicines" as patentable, something not contemplated under the Patent Act (Act No. 11/1986) currently in force. 
  • In an important new development regarding utility models, the novelty requirement will change from local (Spain only) to absolute (worldwide) novelty. In addition, utility models will be able to be used to protect not only mechanical devices but also chemical, though not pharmaceutical, substances and compositions.
  • And finally, the patentability requirements (novelty, inventive step, and industrial applicability) and how they are assessed by the SPTO will be new concerns for some applicants with a view to responding convincingly and appropriately to objections by Examiners and thus avoiding additional objections – for instance, on grounds of lack of clarity.

What is more, the changes being implemented by the Patent Act address not just substantive matters but also a number of other significant aspects of patent prosecution. To mention only a few of the most important: 

  • The new Act stipulates that the fee for the Report on the State of the Art (search report) will have to be paid along with the filing fee. 
  • Applicants will have three months from publication of the search report to request the substantive examination. Absent a timely request for examination, or if the request is withdrawn, the application too will be deemed to have been abandoned. When requesting the examination, an applicant may, at the same time, respond to any objections raised in the SPTO's Examiner's written opinion issued with the search report. 
  • There will no longer be only one chance to overcome any deficiencies noted by the Examiner before the reasoned opinion, and Examiners will have to allow applicants additional opportunities to amend the application and submit new arguments under a procedure to be specified in the Implementing Regulations. All amendments will have to include an explanation as to why they make a difference, and support for the amendments in the application as originally filed will have to be shown. If there is no response to the Examiner's communications, or if the applicant is unable to overcome the objections, the application will be refused. 
  • Third-party opposition proceedings will now take place after grant, within six months of the date of grant, instead of prior to grant as provided under the current Act. There will be new administrative procedures to enable applicants to voluntarily limit and surrender patents, where appropriate.

So it is that upon entry into force of the new Patent Act, applicants seeking patents of invention in Spain will encounter a completely new scenario, with many substantive and procedural changes. This highlights the need for top professional assistance with a view to optimizing your industrial property assets by minimizing the stumbling blocks that can be anticipated during patent prosecution.

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)

Visit our website:


  1. That's a perfact place for student ho want to get admission in abroad .i am so glad to see this blog its have great information and guide line about lots of country information .
    its good for student who are interested in study abroad .

    The Castings Huddersfield | The Sawmill Huddersfield

  2. Betting online has gained a new level of population in recent years and no doubt its success has gaining new heights. For a successful betting, you must have immense knowledgeable about the sport. betting prediction free tips 1x2 today fixed matches


  3. The best law ever is the new Patent Act. People are affected by it, and I think that's really great. When my friend needed help with his legal assignment, he turned to a company that offers the best assignment writing service in the UK. I told him about it.

  4. Dossier’s exquisite collection of luxury scents can now be indulged in without the luxury price tag thanks to their exclusive discount codes making it even more irresistible! Dossier has a variety of top quality perfumes that are a version of popular ones and is an alternative for those who cannot afford costly designer scents. They have floral, fruity, woodsy and oriental inspired products that they sell for different fragrance preferences. You may attain the elegance associated with luxurious fragrances without sacrificing on quality or budget by utilizing dossier discount code. Apply these codes at check out to make huge savings when buying favorite fragrances. The gift of luxury smells at a fraction of the cost will go a long way as far as self-indulgence is concerned. Grab this opportunity to improve your fragrance game on the cheap. Take advantage of Dossier’s collection, use the discount codes, and plunge into premium fragrances world minus hefty prices!

  5. ELZABURU offers expert insights and comprehensive services in the field of intellectual property. Their in-depth knowledge and strategic approach make them a trusted partner for protecting and managing IP assets.
    motorcycle accident attorney virginia beach
    The Motorcycle Accident Attorney in Virginia Beach demonstrates expertise and dedication in representing clients involved in motorcycle accidents. With a track record of success and personalized attention to each case, they offer strong legal advocacy and support for victims seeking rightful compensation.