Spain is party to most of the international treaties on IP administered by WIPO and WTO and to European treaties such as the European Patent Convention (EPC).
As Spain is a member state of the European Union (EU), Community regulations related to IP are applicable, as are all international treaties to which the EU is party.
In a new newsletter (issue 17th 2016), the European Council issued a message that Spain had joined the joint Federated European Patent Register.
The function of this register is primarily to provide users with a direct, fast access to the latest official bibliographic information and legal status information of European invention patents in the relevant Member States that have been authorized by the ESA and entered the national phase.
Spain is a signatory of the EPC and the Patent Cooperation Treaty (PCT).
Spanish law does not define what constitutes an invention, but it does enumerate items that shall not be regarded as inventions: (a) discoveries, scientific theories and mathematical methods; (b) literary or artistic and scientific works; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and computer programs; (d) forms of presentation of information; (e) methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods.
Two Main Types of Patent:
(1) Patent of invention: for inventions with a high degree of novelty (ideas which, before the filing date of the patent application, have not been made available to the public in Spain or abroad, or are not contained in earlier Spanish patent or utility model applications) and inventive step (not obvious to a person skilled in the art);
(2) Utility model: for lesser inventions with a lower degree of novelty (ideas which have not been disclosed in Spain or are not contained in earlier Spanish patent or utility model applications) and inventive step (not very obvious to a person skilled in the art); In both cases, requirements and procedures are very similar, but rights last for 20 years in the case of patents, 10 years in the case of utility models.
It is also possible to extend the duration of patents for medicinal products pursuant to the provisions of Council Regulation (EEC) No. 1768/92 of June 18, 1992, concerning the creation of a Supplementary Protection Certificate for medicinal products.
Applicants have three different ways to obtain protection for inventions in Spain:
( 1 ) Filing a national application with the Spanish Patent Office;
(2) Filing an application for a European patent having effect in Spain;
(3) Filing an international application designating Spain under the PCT.
After examining certain minimum formal requirements, the examination procedure proper begins, with the Patent Office paying special attention to the requirements of unity of invention and patentability (inventive step and novelty are not examined, although provision is made for rejection in cases where there is a clear and notorious lack of novelty).
If the invention meets all requirements, the applicant must request a "report on the state of the art" or search report. This will not be required for patent applications for which the international search report has been prepared by Spain as the international searching authority. In its report on the state of the art, the Patent Office will cite those documents, publications, or patents that may have a bearing on the novelty and inventive step of the invention. The Patent Office will also issue a written opinion on the patentability of the invention. An application is deemed to have been withdrawn where the applicant does not request the report on the state of the art. Subsequently, the applicant may choose to request prosecution of the application with or without substantive examination.
Grant or rejection by decision of the Patent Office follows the formal and patentability examination (excluding novelty, inventive step, and sufficiency of the description where the granting procedure has not included substantive examination). Patents are granted without prejudice to third parties and without any guarantee as to the validity or utility of their subject matters.
Spain's current patent law has been practiced for nearly 30 years, and the current legislation urgently requires that the present patent law be modified according to the actual needs of society. With this in mind, the Spanish Patent and Trademark Office (SPTO) proposed a revised patent law, and the second draft of the proposal was released recently.
The most controversial place in the current system is the award of alternative channels, where the applicant can choose between the traditional awarding procedure and the awarding procedure involving pre-review, the traditional grant process, all the mature patent applications will be granted, and the awarding procedure involving the review, the SPTO Examiner needs to review the patent application, Originality (non-obvious) and industrial applicability are granted only if the invention is considered to satisfy novelty. Unfortunately, the latter has never been stabilized, and only 8% of the applications today are subject to the way in which the applications are granted.
This may be a major change in the draft, and through modification, the substantive examination of the patent application will become the necessary procedure so that the invention will be patented only if the patentability requirement is met.
Of course, this is not the only change, the other major changes are as follows: 1. Simplify the requirements, allow the first application in any language, and then submit a Spanish translation.
2. Prior technical searches are advanced to the application stage, so the search fee needs to be paid at the time of application submission.
3. The medical use of known substances or new therapeutic applications can be patented.
4. Change the objection to after the grant.
5. New administrative procedures are introduced for the revocation of patents and the restriction of patents upon the request of patent holders.
Patents are not the only right to change significantly: as a pillar of Spanish SMEs, modifications to utility models have also been proposed. The novelty requirements of the Utility model will be written in the same way as the novelty requirement of the patent, thus eliminating the uncertainty of the current law. On the contrary, the degree of originality will not be changed to remain less than the requirements of the patent. At the same time, the scope of inventions as a utility model protection will be extended to chemical substances, biotechnological inventions and pharmaceutical ingredients.
These changes will make utility models a very attractive option for obtaining rapid protection, as the process of acquiring patents is relatively slow.
On the issue of costs, the draft provides a 50% discount for specific inventors and small and medium-sized enterprises in applications, searches and reviews, making it easier to protect their inventions.
In short, all these changes will bring the patent system up to date, a significant step in Spain's efforts to protect innovation.
Spain is a member of Paris Convention, Madrid Agreement and Madrid Protocol. Exclusive rights in a trademark ensue only from registration at the national or a supranational trademark office.
Applicants have 3 different routes to obtain rights in a distinctive sign in Spain:
( 1 ) Registering a Spanish trademark with Spain's national office (SPTO); (2) Registering a Community trademark with the Office for Harmonization in the Internal Market (OHIM);
(3) Registering an international mark under the Madrid system and designating Spain or the EU.
On filing the SPTO examines whether the trademark application fulfils the minimum formal requirements for admission and publication for opposition purposes. If no formal inadequacies are found, the application is published in the Official Gazette, opening a third-party opposition period, and the SPTO undertakes its own examination as to absolute grounds for refusal. If objections are raised or oppositions are lodged, the SPTO issues an official action against the application and invites submissions by the applicant in response, following which the SPTO issues its decision to grant or refuse the application. SPTO's decision is appealable by means of an administrative appeal to the Appeals Section of the SPTO itself.
The SPTO's decision in an administrative appeal is, in turn, appealable to the Contentious-Administrative Appeal Courts. Lastly, judgments issued by a Contentious- Administrative Appeal Court are appealable to the Contentious-Administrative Appeal Division of the Spanish Supreme Court, whose judgment is final and unappealable.
If the trademark is granted, the corresponding certificate of registration is issued. Trademarks are granted for 10 years from the filing date. No declaration of use or intent to use declaration is needed.
Registration of a trademark obliges its owner to use the mark in trade on the goods/services for which it has been registered. In the case of a Spanish or a Community trademark, there is a grace period of 5 years from registration, after which third parties may request revocation of the trademark on grounds of lack of use.
Spain is a member of the Hague Agreement Concerning the International Registration of Industrial Designs.
Design refers to the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
As with trademarks, applicants have three different routes to obtain protection for the appearance of a product in Spain: ( 1 ) Registering a Spanish industrial design with Spain’s national office (SPTO); (2) Registering a Community design with the OHIM; (3) Registering an international design under the Hague Agreement designating Spain or the EU.
An industrial design owner may be entitled to protection under the Copyright Act where he can prove it to be an original creation. Where an industrial design has sufficient distinctive character, it may be possible to extend the duration of protection by registration as a three-dimensional trademark.
In the case of Community designs, the Regulation also provides for the possibility of more restricted protection for unregistered designs having duration of only 3 years.
National Design: Design registration requires novelty and individual character. Novelty is vitiated both by publication, exhibition, sale, or disclosure of the design in the EU as well as by knowledge that may be gained within circles operating in the relevant sector of trade in the normal course of business.
After the SPTO's formal examination, subsequent examination considers only whether the subject matter of the application satisfies the legal definition of a design or is contrary to public order or accepted principles of morality. Where there are no irregularities or deficiencies or, where there are, after they have been remedied, a certificate of registration is issued and notice of grant is published with are presentation of the registered design.
Opposition to the grant of a design on grounds that the design fails to fulfill any of the requirements for registration may be brought by any third party within two months of publication of the registered design. Opposition grounds may include grounds for refusal not examined ex officio by the SPTO.
Protection of a Spanish or Community design is for 5 years, renewable for one or more successive 5-year periods up to a maximum of 25 years.
Spain is a member of Paris Convention, Berne and Rome Conventions, and the TRIPs Agreement.
Spanish law includes authors' rights as well as so-called related rights under the general heading of "intellectual property". The creator of a literary, musical or scientific work is protected by authors’ rights, while performers (musicians, actors, etc.) are protected by related rights.
Each author enjoys moral or personal rights in his work, without the possibility of renunciation or expiration. These rights entitle the author to defend the integrity of his work, the recognition of his authorship and the decision to disseminate a work.
By contrast, an author may surrender or assign the economic and exploitation rights which enable him to distribute his work and obtain economic compensation.
Remuneration rights are usually managed by copyright collecting societies national in scope. Additionally, they usually have international agreements with similar entities.
The very act of creation suffices for enjoyment of rights in the created work. Therefore, registration at the Copyright Office is voluntary, though it is deemed advisable as means of providing proof in the event of possible infringement.
Copyright duration is the author's lifetime plus 70 years, while the duration of related rights is 50 or 25 years.
The conditions to be fulfilled by a plant variety in order to be eligible for protection are: novelty (it must be new); distinctiveness (it must be clearly distinguishable from existing varieties); uniformity (its relevant characteristics must be sufficiently uniform); and stability (its relevant characteristics must remain unchanged). Certificates are granted for 25 years, 30 years in the case of vines and trees, from the date of grant of the application.
Computer software: all forms of expression of a computer program are eligible for protection except those designed to cause harmful effects to computer systems. Computer programs are defined as any sequence of instructions intended for use, directly or indirectly, in performing a function or task or to achieve a given result in a computer system.
Protection also encompasses preparatory documentation. The ideas and principles on which any component of a computer program is based, including those for its interfaces, are not protected. Computer programs are eligible for protection only if they are original intellectual creations of the author.
The main formal means of resolving disputes in Spain are litigation in the Spanish courts, mediation and arbitration.
Spain's judicial system comprises courts and tribunals organized in accordance with the system laid down in the 1985 Judiciary Act. The 1985 Judiciary Act was enacted to bring the court system into compliance with the Spanish Constitution of 1978, which had reorganized the territory of Spain into autonomous communities having broad legislative and administrative powers, defined on the basis of historical and cultural distinctions among the peoples of Spain.
The Constitutional Court and the Supreme Court are the highest courts in Spain. The Constitutional Court acts as the court of last instance on all questions arising from or relating to the Constitution, while the Supreme Court has jurisdiction in all matters other than constitutional matters.
Remedy Both civil and criminal remedies are available to IP right holders. Civil remedies include injunctions, provisional and precautionary measures, damages, corrective measures to put a stop to infringements such as removing from the marketplace all products, packaging, containers, marketing materials, labels, or other documents which infringe a trademark, as well as publication of court decisions at the expense of the defendant by way of public announcement, where ordered by the court.
Damages may comprise actual losses or lost profits due to infringement.
Lost profits may be calculated on the basis of the profits the right owner could have earned had the infringement not taken place; those obtained wrongly by the infringing party; or the amount the infringing party would have had to pay the owner for a licence to use the IP right lawfully.
The time bar on IP infringement actions in the civil courts is 5 years from the date the right holder is entitled to bring a claim, which runs from the date he has knowledge, or ought to have had knowledge, of the infringement. Recoverable damages include only those incurred during the five-year period preceding the date on which the claim is made. Therefore, it is up to the right holder to ensure that any damage suffered before exercising the claim will be covered, by taking timely action within the legally available period. This can be particularly important in cases where a substantial amount of time has elapsed between commencement of the infringement and the time when the right holder has, or can reasonably be expected to have, knowledge of the infringement.
Provided by Elzaburu S.L.P.
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