Jueves, 22 Octubre 2015

New patent law 24/2015, of 24th July

VolverThe new patent law removes the current optional system or “a la carte” for patents granting and increases procedure costs.

After three decades in force, last 25 July, it was published on the Spanish Official Gazette the new Patent Law 24/2015, effective as of 1 April 2017, which, according to the text itself, is the needed general regulation update for which, due to the several principles affected and amended, a partial reform, as at present, would not be enough.

The reasons for the amendment are diverse, including without limitation: shift of grant procedure from national to international and growth, both in amount and proportions of patents under the latter; the decisive role of innovation as international trade support in a increasingly globalised economy (planned under the Agreement framework established by World Trade Organisation (WTO) or the subsequent legislative development of the patent laws in the EU (Directive on the protection of biotechnological inventions, creation of supplementary protection certificates for medicinal and plant protection products and Patent Law Treaty).

Accordingly, the purpose of this update (aligned with the goals on Law 2/2011, of 4 March, on Sustainable Economy and Law 14/2011 of 1 June, on Science, Technology, and Innovation) is to simplify and speed up the protection of innovation through patents and reinforce legal security.

To this end, and among other changes, we, from Industrial Property Department, highlight the change on the current granting system, which will be a revolution for industrial property in Spain, because it ends patents without examination, which currently represent nearly every requested patent, and therefore the system will change to granting patents with preliminary examination to establish novelty or inventive step, which is the system mostly used in the countries surrounding us.

We agree as patent experts that nothing justifies the granting of a patent when the state-of-the-art search reports reveal that the invention is not such, failing to be a novelty or an inventive step.

The previous procedure model (introduced in the amendments on Spanish Royal Decree 8/1998, of 31 July, on urgent measures regarding industrial property) was not based on innovation incentive, but on the users preferences, which implied transferring to competitors the costs and expenses of cancelling patents that never should have been granted. The new regulation aims to abandon “weak” patents, according to Law, to establish “strong” patents, comparable to patents in international systems and industrialised countries.

As lawyers with expertise in Industrial Property, we must point out that changing the system involves a change on fees, since currently most patents cost 766 Euro (€74.92 for application plus €691.00 for the state-of-the-art search report) and the new law boosts the price nearly to €1,200.00, because a preliminary examination is added (€389.00). It is worth mentioning that a 50% bonus is expected for entrepreneurs and universities, extensible to 100% if a commercial application is proved.

With the new granting model with preliminary examination, some procedure amendments are introduced with the aim to reach an integrated model where every application has the possibility to go through the phases directly to the search phase, as it is the case in international procedures and therefore, their start will not depend on other conditions apart of those that are essential for the search itself.

The new system will replace the previous procedure by other integrating the search within the technical examination and its conclusions will be shown on the written opinion. This will be a first communication from the examiner and the applicant may respond to comments and objections, if any, when requesting a substantive examination if they decide to continue the procedure, amending, when necessary, the application as needed to comply with legal requirements.

Bringing the search phase forward speeds up the procedure on the key aspect for the applicant, which is to facilitate timely access to relevant information in order to decide to continue with their application and, where appropriate, to patent abroad within the priority term.

The substantive examination will have the aim of checking that both patent and invention comply with every formal, technical, and patenting requirement established by the Law.

In order to speed up the procedure, before-grant oppositions are replaced by a system of after-grant opposition, which is widely used in comparative law, and although third-parties comments are kept, even if they are not a part of the procedure, they may be filed once the application is published and may address any aspect related to invention patenting.

We, as lawyers with expertise in Industrial Property, highlight other amendments of the Law such as the figure of the utility model on substantial matters, i.e. determining the relevant state of the art, the kind of inventions that may be protected under this modality and the conditions to act in defence of the law derived from this kind of protection.

Certificates of addition, which formerly could be requested during all the legal life of the patent, will be eliminated from the regulation, based on the fact that their demand was marginal and patent holders did not use this option.

The provisions on the so-called “work inventions” are also updated. Title III, on patent law and designation of the inventor, keeps essentially unchanged as well as the regulation on Title IV on inventions under the framework of a labour or services relationship regarding ownership attribution. Nevertheless, some conditions are required to exercise the rights to which each part is entitled by the Law in such a labour or services relationship, seeking a better balance between employees’ information disclosure duty and duty to respond and to implement the commitment where appropriate, by the entrepreneur or the employer.

The irrebuttable presumption that allowed the entrepreneur to claim ownership of inventions that were patented within the following year after the labour relationship was terminated will be replaced by other that may be rebutted, claiming that such inventions were made within the duration of the relationship.

To sum up, from Industrial Property and IT Law Department at Belzuz Abogados, we consider that the measures adopted, especially preliminary examination, will help to build a “stronger” patent system than the current one.

Departamento de Tecnologías de la Información y de la Comunicación (TIC)

 

Belzuz Abogados SLP

La presente publicación contiene información de carácter general sin que constituya opinión profesional ni asesoría jurídica. © Belzuz Abogados, S.L.P., quedan reservados todos los derechos. Se prohíbe la explotación, reproducción, distribución, comunicación pública y transformación total o parcial, de esta obra, sin autorización escrita de Belzuz Abogados, S.L.P.

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