Tuesday 17 May 2016

Utility models under the new Patent Act: chemicals and can openers in the same bag for the first time (V)

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.

III. The importance of professional advice (Francisco J. Sáez)
V. Utility models under the new Patent Act (Pedro Saturio)

Author: Pedro Saturio

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