One of the most striking features of the new Patent Act is
the extension of the scope of what may be protected as a utility model. The new
definition of utility models provided in the law includes the word
“composition”, thus broadening the range so as to take in practically any
product or composition, including chemical preparations or substances. At the same time, however, it is stipulated that inventions relating to biological
material or pharmaceutical substances and compositions are excluded.
This new facet of utility models may well give rise to some
controversy in the future, given that, on the one hand, the boundaries between
the products which qualify for protection in this form and those which do not
are unclear in some cases and, on the
other, to set the inventive step requirement at a level suitably lower than
that applicable to patents could prove problematic when the invention relates
to a chemical product (as it in fact already is in the case of inventions of a
mechanical nature).
So from now on we shall have to become accustomed to seeing
small mechanical inventions, such as can openers, which have traditionally been
the subject matter of this form of industrial property, appear side by side in
the Official Gazette with chemical products, when applicants opt for this
manner of protection for these.
Not all the changes are so controversial, however. For
example, the relative novelty requirement, confined to Spain alone, will no
longer apply and utility models will therefore be on the same footing as
patents with respect to the state of the art. This means that it will be easier
to determine clearly which documents may constitute prior art for the purpose
of assessing the novelty and inventive step of a utility model and we may therefore
see an end to the uncertainty which had existed under the former Patent Act.
Another significant development to be introduced under the
new Law lies in the possibility of requesting reports on the state of the art,
containing a written opinion, for utility models. These reports will be
necessary for the effective enforcement of the exclusive rights obtained
through registration (for example, in infringement proceedings brought against
a third party).
The grant procedure does not undergo any major amendment,
although with respect to opposition proceedings it is to be noted that under
the new Law it will be possible to request a two-month extension of time to
complete an opposition by submitting evidence and supplementing the initial
arguments. Another new (and undoubtedly positive) feature is that the
examination of oppositions will be conducted by a panel of three technically
qualified SPTO experts and, as the case may be, of a lawyer.
So how does the future look for utility models in Spain? The
extension of their scope to chemical products, the possibility of claiming an
internal priority and the fact that substantive examination is to become
obligatory for patents may well prompt more applicants to protect their
inventions as utility models, thus reversing the downtrend observed in recent
years.
It would certainly appear, at all events, that a window is
going to be open to different interpretations of some aspects of the new system
on the part of applicants, agents, examiners and judges and it remains to be
seen how they will be resolved in the future.
Author: Pedro Saturio
Visit our website: http://www.elzaburu.es/en
I. A new Patent Act … In two years'time? (Antonio Castán)
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: Pedro Saturio
Visit our website: http://www.elzaburu.es/en
