University Inventions in the New Spanish Patent Law

Tuesday, 5 of September of 2017

The new Spanish Patent Law 24/2015 devotes article 21 to the legal regime of inventions made in public universities and also in other public research entities. The new regulation clarified this matter and introduces a number of notable changes that are analysed below.

On the one hand, with the entry of the new Law there has been a change in the subjective scope, moving from the concept of "lecturer with research functions" to the figure of the research staff, which is defined in article 13 of Law 14/2011 of Science, Technology and Innovation (LCT) in a broad manner so that it covers various professional categories. According to Law 6/2001 of Universities, researcher is considered: the university professor, the tenured professor, the hired Ph. D. lecturer and the assistant with a Ph. D. Some authors question whether the non-Ph. D. assistant should be considered researcher for the purpose of this Law. The truth is that such condition is tacitly acknowledged, since the fact of being training staff does not prevent them from being able to achieve results from their research activities. Under the LCT there may also be official research staff in public research entities; and research personnel under an employment contract with specific modalities including predoctoral staff and distinguished researchers of the Spanish System of Science, Technology and Innovation.

On the other hand, it shall be recalled that the owner of the patent will be the university in which the researcher develops his activity. Likewise, Article 21.2 contemplates the duty of the investigator to communicate to the entity the invention, within a period of three months. The entity must communicate, in writing, within three months of the notification of the invention by the researcher if it wishes to maintain its rights over the said invention and to apply for the patent or protect it as a trade secret. In case the communication is not done within that period, the researcher has the option to apply for the patent on his behalf. In addition, the researcher maintains the right to participate in the benefits obtained by the entity. For universities this right is regulated by agreement of its governing council.

Finally, as regards the subsidy in the payment of fees for the application and maintenance of industrial property titles, the free-of-charge system for public universities is abandoned. In accordance with Additional Provision 10 of the new Law, these entities will be entitled to a fifty percent bonus in the amount of the fees, and will only be entitled to a hundred percent bonus if a real and effective economic exploitation of the patent or utility model is demonstrated. The aim of this measure is to ensure that strong patents are applied for and that they can obtain an economic benefit thanks to its exploitation.

To sum up, this new legal framework aims to strengthen the figure of university inventions, as well as those of public research entities. Perhaps, it would have been necessary to regulate in a more detailed way what happens with the contracts that are signed between the universities and private entities, as well as the rights of exploitation.