Inventions may be protected in Spanish law through patents and utility models.
3.1 What is a patent?
Patents are exclusive rights granted by the State to the inventor in his invention for a specific term (20 years) on the understanding that once this period has expired, the invention will enter the public domain. Thus society benefits from the technical advantage provided by the invention.
3.2 How can you register a patent in Spain?
In addition to filing a patent application at the OEPM, regional registration systems are also available. Such systems allow the applicant to obtain protection for the invention in one or more countries and each country determines whether or not to protect the patent in its territory pursuant to applicable legislation.
The application process before the OEPM can take a minimum of 30 months.
The patent owner may exploit the invention and prevent third parties from exploiting, marketing, or launching it in the market without consent. While the patent is in force, third parties may only exploit the invention if the owner has granted a license.
3.3 What kinds of inventions are patentable?
In order for an invention to be patentable, it must be new, involve inventive step and be capable of industrial application. Consequently, the three main requirements to obtain a patent are as follows:
- Absolute novelty
- Inventive step
- Industrial application
Scientific discoveries or theories, mathematical methods, literary, scientific, artistic works and any other aesthetic creations, rules and methods of performing a mental act, playing a game or doing business are not considered patentable. Neither is it possible to obtain a patent for inventions that are contrary to public policy, plant varieties (which have their own special legislation) animal breeds, essentially biological processes for the production of plants or animals and the human body.
3.4 Are bio-technological inventions patentable
The Spanish Patents Law includes the legal protection of bio-technological inventions, although clear restrictions are established based on ethics and public policy.
3.5 Are pharmaceutical products patentable
In Spain both product and process patents are admitted and pharmaceutical products have been patentable since 1992.
Indeed, the inclusion of the “Bolar clause” or “Bolar exemption” in the Spanish Patent Law refers precisely to pharmaceutical products. According to this clause performing within certain time periods the necessary studies, tests and trials to obtain authorization for generic drugs does not constitute patent infringement.
Patents are granted for a period of 20 years from the date on which the application is filed. However, a maintenance fee, which is subject to a gradual annual increase, is due yearly.
Once the 20-year period has lapsed, the subject matter of the patent passes into the public domain and may be used by any third party. The Complementary Protection Certificate for pharmaceutical and phytosanitary products, which has been in force since 1998, extends the patent by up to a maximum of five years for the time it took to obtain the relevant administrative authorization, which is essential in order to market such products.
3.6 What is a European patent?
Since Spain’s ratification of the European Patent Convention (EPC) in 1973, Spain may be designated with a European patent application. European patents are administered by the European Patent Office, based in Munich. Via a single procedure and applying legislation in common (the European Patent Convention), this system allows the registration of a bundle of national patents enforceable in the countries designated by the applicant.
3.7 What is a unitary patent?
The new unitary patent system3 will provide uniform protection and will have equal effect in all participating Member States. The aim is to provide legal certainty and to reduce the costs of protecting a patent, in order to encourage investment in R+D+i.
A European patent with unitary effect may only be limited, transferred, revoked or lapse in respect of all the participating Member States, but it may be licensed for all or some of those States.
Following Italy’s4 decision to join the system for enhanced cooperation in the area of the creation of unitary patent protection, Spain is the only major economy in the EU which, for the time being, remains outside the system.
The entry into force of the Agreement on the Unified Patent Court (“UPC Agreement”), which will in turn determine the entry into force of Regulation (EU) 1257/2012, will enter into force on the latest of the following events:
- The first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the UPC Agreement takes place (Germany, France and the United Kingdom).
- The first day of the fourth month after the date of entry into force of the amendments to Regulation 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (“Brussels I”) in order to clarify the jurisdiction of the UPC.
To date, the following countries have ratified the UPC Agreement: Austria, France, Sweden, Belgium, Denmark, Malta, Luxembourg, Portugal, Finland, Bulgaria, Netherlands and Italy.
3.8 What is the PCT?
Spain has ratified the Patent Cooperation Treaty (PCT) which unifies the initial filing of applications and the performance of search reports which are necessary to determine the novelty of the invention and the inventive step, with a view to reducing costs and simplifying the grant of a patent. However, as opposed to the European patent, registration is granted by each of the relevant national Offices.
3.9 What is a utility model?
A utility model is a form of protection for inventions which although new and with inventive step, only give the subject matter a configuration, structure, or constitution that results in an advantage, appreciable for its use or manufacture, but with a lower standard of inventiveness.
A lower standard of inventiveness is therefore required for utility models than for patents. They are granted for a non-extendable period of 10 years, and therefore have a shorter term than patents. This system of protection is particularly suitable for protecting tools, objects and devices used for practical purposes. The application process usually takes between 8 and 14 months.
3 (I) Regulation (EU) 1257/2012, of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, (II) Regulation (EU) 1260/2012, of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements and (III) Agreement on a Unified Patent Court of February 19, 2013.
4 Commission Decision (EU) 2015/1753 of September 30, 2015.