INVENTIONS
"The accurate drafting of a patent is fundamental in order to be able to successfully deal with its prosecution and in order to try to obtain adequate protection against possible infringers. The same applies in the case of patents translated from other languages. The enforceable text will be the Spanish text, so it is very important to produce a high quality translation.
Our firm has an experienced and qualified team, comprising Industrial Property Attorneys, engineers and technicians who specialize in various fields of technology and have a good command of foreign languages and can provide you with advice and help you to prepare, translate, file and prosecute patent and utility model applications with the utmost professionalism."
1. REQUIREMENTS FOR PATENTABILITY.
The Spanish Patent Law 24/2015 grants protection in Spain to inventions in all fields of technology that comply with the following requirements:
• novelty;
• inventive step;
• industrial application.
The following are excluded from patentability:
a. Discoveries, scientific theories and mathematical methods.
b. Literary or artistic works, or any other aesthetic creation (protected by copyright), as well as scientific works.
c. Schemes, rules and methods for carrying out intellectual activities, for playing games or for doing business, as well as programs for computers (protected by copyright).
d. Presentations of information.
e. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.
f. Inventions the commercial exploitation of which would be contrary to “ordre public” or morality. In particular, the following cannot be patented:
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processes for cloning human beings,
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processes for modifying the germ line genetic identity of human beings,
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the use of human embryos for industrial or commercial purposes,
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processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical or veterinary benefit to man or animals, and animals resulting from such processes.
g. Plant varieties (protected as Plant Varieties) and animal breeds. However, inventions directed to plants or animals would be patentable if the technical feasibility of the invention is not limited to a particular plant variety or a particular animal breed.
h. Essentially biological processes for the production of plants or animals (those entirely consisting in natural phenomena such as cross-breeding or selection).
i. The human body, in the different states of its constitution and development, as well as the simple discovery of one of its elements, including the sequence or partial sequence of a gene.
j. A sequence of deoxyribonucleic acid (DNA) as such with no indication of any biological function.
2. MEANS OF PROTECTION:
a) PATENT OF INVENTION.
Its basic features are:
Novelty: an invention shall be considered to be new if it does not form part of the state of the art. The state of the art shall be held to comprise everything made available to the public in Spain or abroad by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application.
Inventive step: the invention shall not be obvious for a person skilled in the art, having regard to the state of the art.
Grant proceedings:
The application is preliminary examined in terms of formal requirements by the Spanish Patent and Trademark Office (SPTO). Afterwards, the SPTO draws up a Search Report on the state of the art (SRSA) which comprises those prior art documents that can be considered to anticipate the invention and a written opinion, which includes an evaluation of the patentability of the invention.
Eighteen months after the filing date of the application or after the priority date claimed, the SPTO publishes the patent application, including the correspondent mention in the Industrial Property Official Gazette (BOPI) together with the SRSA, if the latter has already been conducted.
After the publication of the SRSA in the BOPI, the applicant has a period of three months to file observations to the SRSA and written opinion and, when appropriate, to the Third-party observations if filed, as well as to modify the patent application. During said period, the applicant shall file the request for substantive examination to continue prosecution of the application and shall proceed with the payment of the corresponding examination fee. The SPTO shall consider the SRSA and the written opinion to assess whether the invention meets the formal, technical and patentability requirements set forth in the Law.
Provided that the SPTO considers that all requirements are met, the patent will be granted.
If as result from the examination, the SPTO considers that there are still reasons that prevent the grant of the patent, these will be communicated to the applicant, giving him the opportunity to file observations or to correct the application. The SPTO may repeat the communication of objections by sending new deficiency communications, giving the applicant new opportunities to correct the application. Once the previous actions have been completed, the SPTO will finally decide on the grant or refusal of the patent, publishing a mention of it in the BOPI.
Opposition proceedings:
Within the six months at the publication of the grant of the patent in the BOPI, any person may oppose the grant of a patent by filing a notice of opposition and paying the opposition fee, based on the following reasons:
a) The claimed invention does not meet one of the patentability requirements, i.e., novelty, inventive step or industrial application.
b) The description of the invention is not sufficiently clear and complete for it to be carried out by a person skilled in the art.
c) The subject-matter of the granted patent extends beyond the content of the application as filed.
In the event that an opposition is filed against the grant of the patent, the patentee will have at least one opportunity to file arguments and/or modify the application.
The SPTO will examine the grounds for opposition, as well as the arguments of all parties, including, where appropriate, the amendments filed by the patentee, and will decide whether to maintain the grant of the patent (with or without amendments) or to revoke the patent grant.
Term of protection: 20 years from the filing date of the application.
Maintenance fees: annual fees to maintain the patent in force must be paid as of the third anniversary of the filing date of the application.
b) UTILITY MODEL.
It confers protection to inventions consisting in providing an object or product with a form, structure or composition from which some practical advantage may be gained for its use or manufacture. In addition to the subject-matter and inventions previously mentioned as excluded from patentability for patents, inventions related to methods, biological matter and pharmaceutical substances and compositions may not be protected as utility models. Its basic features are:
Novelty: the novelty requirement is the same as for patents, that is to say, the subject matter of a utility model shall not have been disclosed in Spain or abroad by means of a written or oral description, use or by any other means, before the filing date of the utility model application.
Inventive step: the invention shall not be very obvious for a person skilled in the art, taking into account the prior art (thus, it requires a lesser degree of inventive step than patents).
Grant proceedings:
The application is examined in terms of formal requirements by the SPTO and, afterwards, it is published in the BOPI, opening a term of two months, allowing third parties to file oppositions arguing lack of any of the legal requirements required for its granting, including novelty, inventive step, industrial application or sufficiency of the description.
If no oppositions are filed, the SPTO will issue a decision granting the utility model application.
Although the proceeding for grant of a utility model does not require the issuance of a SRSA, for enforcing the exclusive rights derived from a utility model, it will be necessary to have previously obtained or requested a SRSA related to the subject-matter of the enforced utility model.
Term of protection: 10 years from the filing date of the application.
Maintenance fees: annual fees to maintain the utility model in force must be paid as of the third anniversary of the filing date of the application.
