The new Patent Law: A Deep Updating of the Spanish Patent system

Monday, 3 of April of 2017

After almost two years since its publication in the Spanish Official Bulletin, on April, 1, Law 24/2015, of July 24, on Patents and its Implementing Regulation (Real Decreto 316/2017 of March 1st), entered into force, repealing Law 11/1986, of March, 20.

Like in the previous law, the new provisions seek the harmonization of national rules on inventions with other legislations from our international environment, as well as to adapt to those new situations existing in the fields of innovation, scientific research and in the market, which had demanded an urgent update of our legal framework, including the Patent Law at stake.

With the entry into force of the new Patent Law, the Legislator has opted for a deep review of the rules governing the field of patent and innovation, as it is going to have a strong impact on both the administrative granting proceeding and the judicial tools aimed to protect patent rights already granted.

In particular, the granting proceeding has been boosted by the establishment of a unique procedure before the SPTO which follows the filling of the patent application. Remarkably, under the new Patent Law it is not possible anymore to grant patents without carrying out a prior examination. Accordingly, the applicant shall now receive a report including both the search results of the state of the art and a written opinion on the patent filling, on the basis on which the applicant has the opportunity to correct detected defects of the application, including the partial amendment of single claims. Additionally, a post-granting opposition proceeding has been established.

One new feature is the possibility of declaring the partial invalidity of a claim. This element may undoubtedly result in the consolidation of stronger patents, due to the greater possibility of adjustment of the problematic points of each claim, shaping in the most suitable manner any patent.

Among other important innovations, we can mention a broader regulation of compulsory licenses, particularly in the field of pharmaceuticals and medicinal products, as well as a detailed arrangement of inventions within labor relationships.

With regard to the patent invalidity proceeding, the Spanish legislator introduced a new system concerning the legal standing to initiate that kind of proceeding, although it must be pointed out that, in this case the patent holder may also partially amend each claim, which undoubtedly reinforces its legal position and compensates the fact that the in invalidity proceeding the active legal standing can be ascribed to third parties.

Besides, in connection with the judicial actions available to enforce patent rights, it is worth mentioning important changes such as the extension up to two months of the time granted to the defendants to file their responses to the plaintiffs’ complaints or, if necessary, a counterclaim. In this way, the Spanish judicial framework for patent matters approximates – although without a complete harmonization as regards time limits – to neighboring legal frameworks. Apart from that, the determination of the amount of the indemnity award is deferred to the enforcement phase of the judgment, in order to obtain a more streamlined procedure. Notwithstanding this circumstance, the criterion to be used in order to reach this amount must be determined during the trial, always prior to the enforcement of the future judgement.

With regards to the territorial jurisdiction to settle infringement proceedings, it is determined that it corresponds to specialized Commercial Courts, located in the seat of the Superior Court of Justice of the Autonomous Community where the infringing acts took place. Currently, there are specialized Courts in the Localities of Barcelona, Valencia and Madrid.

Finally, for the sake of obtaining stronger rights, the system aimed to grant utility models is assimilated to that of patents with the establishment of the examination of the state of the art having not only a national but an international scope.

For all of the above, the speeding up and simplification of the granting procedure, together with procedural rules more in line with the reality of our current legal practice, have caused optimism with regards to the entry into force of the new Patent Law. Moreover, we must not forget measures that are clearly aimed at boasting innovation and research policies among SMEs and entrepreneurs through discounts in the fees and costs related to the filing of patents and utility models. We will be able to evaluate all these changes in a more accurate manner after a certain time as of the application of the new Patent Law, and by that time we hope to offer you all our opinion on the practical outcome of the application of the so much awaited Law.