Last July 13th, 2015 the Spanish Senate approved a new Spanish Patent Law.
The new Law will not come into force until April 1st, 2017.
The new Law introduces, inter alia, the following changes:
1. It becomes compulsory to request the full substantive examination on novelty and inventive step of all Spanish patent applications. Until now, it was optional to request this substantive examination.
2. Enlarges the possibility to obtain utility models to chemical products. No utility models can be obtained for inventions relating to processes, methods, pharmaceutical and biological products. The novelty required is worldwide (before it was only in Spain). Utility models are not subjected to substantive examination on novelty and inventive step. However, oppositions on these grounds can be filed by third parties. Before enforcing a utility model, it will be required to obtain a search report on the state of the art made by the Spanish Patent and Trade Mark Office.
3. Patents of addition are abolished.
4. It will be possible to submit a protective letter to the Courts when one would foresee that the owner of a patent or utility model is likely to request a provisional injunction.
5. Incorporates into the Spanish law the provisions of several international treaties signed by Spain, like EPC 2000, PLT, PCT etc.
6. Will permit to the patent or utility model owner to restrict the claims after grant. So far it was only possible to delete claims.
7. In invalidity proceedings, it will be possible to have partial invalidation of claims. So far it was only possible to invalidate claims in its entirety.
8. Introduces privilege for all communications of Spanish Patent and Trade Mark attorneys with their clients. Privilege is extended to matters relating to patents, utility models, industrial designs, trade marks and trade names.
Reported by:
Durán-Corretjer SLP
Professional corporation
of Industrial Property Attorneys
