As a consequence of the entry into force on April 1 of the new Spanish patent Law 24/2015 substantial changes have been introduced in the regulation of the Spanish patent system.
Historically the utility models had great importance in Spain as a traditional figure of intellectual property rights, serving as a means of development of the industry, especially SMEs. Focusing on legislative developments that directly affect the figure of the utility model we would like to highlight the following:
the prior art is equated with the one required for patents, since worldwide novelty is required, whereas the lower level of inventive step is maintained.
extension of the subject matter that may be protected as a utility model to any product, so that chemical products, substances or compositions (except for substances and pharmaceutical compositions, as well as biological material) may be protected by a utility model, while the exception related to method inventions is maintained.
the new law requires a search report (IET) in connection with the subject of the utility model in which the action is based in order to initiate any legal action related to the exclusive rights derived from a utility model.
In relation to this, we would light to point out that the new Spanish Patent Law does not modify the previous Law in relation to the utility models processing, since it is not required for granting either the search report or the substantive examination of patentability. However, Article 148.3 the new patent Law in relation to the exercise of actions, establishes the requirement to obtain the search report (IET) provided for patents, in order to avoid abuses in the exercise of the rights.
The Law establishes that the search report (IET), which will be made available to the public and attached to the administrative file, will be notified to the requester. That means that any third party, not just the applicant or owner of the utility model is entitled to request this search report.
It must be noted that in the event that a lawsuit is filed before the Courts without the required search report, the defendant may request the suspension of the term for replying until such report is submitted. In addition, this new requirement established by law may also lead to delays in obtaining possible precautionary measures, so it may be advisable in some cases for utility model holders to request this search report before the possibility of future litigation.
In addition, we would also like to point out the doubts that have arisen by the confusing wording of the Law, since on the one hand it establishes the compulsory nature of this requirement for the exercise of rights-based actions derived from a utility model filed after the entry into force of the new law (April 1, 2017), and on the other, it establishes that such legislation will apply equally to inventions filed under the validity of the previous Patent Law.
In view of this legal uncertainly, and until the interpretation adopted by the Courts in this respect is known, the SPTO has chosen to carry out all those search reports that have so far been requested, in the event that the competent Courts decide that these reports are necessary.
Another uncertainty raised by the regulatory loophole in the new legislation is whether the SPTO, when conducting the search reports of utility models, will take into account the existence of previous search reports that may have been carried out on the same subject matter, as is the case in the search reports carried out in patents cases, and whether the reimbursement of fees as laid down for patents in Article 183 on the new Law will also be applicable.
Even though the SPTO has not adopted any official decision in this regard, it seems that it is open to this possibility and we hope that this regulatory vacuum will be successfully overcome by the practice of the SPTO.