The Spanish Patent and Trademark Office (SPTO) recently submitted a first draft for a new Patent Act, which would replace the current one of 1986. As from 1986, several amendments have been implemented, however the new text submitted by the SPTO is a complete revision of the current Law. The new Law has been long awaited, since several requirements to comply with new International Treaties (among others, EPO 2000, TRIPS and Patent Law Treaty) ratified by Spain needed a number of amendments.
Probably the most significant modification proposed in the new text is the mandatory substantive examination, applicable for all patent applications apart from utility models. This examination, which has been voluntary until now, will considerably improve our patent regime by strengthening the patent rights granted by the SPTO. Indeed, the credibility of a patent system depends on this examination, as well as the capacity of the PTO’s examiners to perform quality state-of-the-art searches and quality exams to confirm the novelty and inventive character of the subject matter of a patent application.
As part of this new approach, oppositions and appeals from third parties against the registration of a patent application will be admitted. This may delay the registration process, but it will avoid having to visit necessarily the courts to seek the cancellation of patents lacking novelty. Currently, oppositions are admitted but only in those cases in which the patentee has voluntarily applied for the substantive examination.
In addition, under the new Law, the preliminary report on the prior art will be conducted within the priority term (12 months), which will allow the applicants to decide on the international extension of the patent when they have further knowledge on the possibilities of achieving the patent registration if the prosecution continues.
With respect to the utility models, the ‘national novelty’ requirement is confirmed, however they will now be affected by any disclosure available from Spain, which in practical terms means that all information available in digital databases (ie Esp@cenet) accessible from Spain, might be cited as prior art. This will certainly increase the novelty standard required for utility models.
From the enforcement perspective, the most important change refers to the ‘doctrine of equivalents’ applicable to interpretation of the scope of the patent claims. This doctrine was also explicitly included in the European Patent Convention (EPC 2000). Spanish Courts have applied this doctrine for years and therefore we expect no real impact from this modification. However, we consider that the new right allowing patentees to restrict the scope of the patent claims while being in Court litigation will have more practical consequences.
Regarding patentable subject matter, the most relevant improvement affects to pharma inventions, since under the new Law the patentability of compositions for their use as medicines or for new therapeutic applications is specifically foreseen. In addition, the EC Regulation about supplementary protection certificates (No 469/2009) is explicitly included in the new Law.
Some further rules about the prosecution and granting procedure are also amended in order to comply with the Patent Law Treaty, recently ratified by our country in 2013.
It should be noted that this is only a first draft, which deserves further analysis. However, preliminary opinions seem quite favourable, and the initiative for a full revision is welcomed.
Ignacio Temiño Is a Partner of Abril Abogados