On April 1 2017, a new Patent Law en-tered into force in Spain. The newLaw aims to raise patent quality inSpain and changes the provisionsfor patent eligibility, patent prosecu-

tion, patent litigation and even for what consti-tutes prior art. Right holders with an interest inSpain are well advised to take note of thesechanges and consider adapting their filing, prose-cution and litigation strategies.

Patentable subject matterPerhaps the most important change in patent eli-gibility is that the first medical use of substancesor compositions is now patentable, and so are sec-ond medical uses in the form of purpose-relatedproduct claims.

The list of elements and activities that are notconsidered inventions (such as computer pro-grams) now specifies that the provision only ap-plies to the extent that the patent relates

exclusively to one of these elements or activitiesas such, bringing the practice into line with thatof the European Patent Office (EPO).

DNA with no indication of a biological func-tion is explicitly excluded from patentability, andso are surgical or therapeutic treatment methodsand diagnostic methods, which in the previous lawwere linked to a lack of industrial applicability.

The new law also opens up the possibility toobtain utility models for chemical products, whichwas not possible before. What has not changed isthat methods, biological matter and pharmaceuti-cal products cannot be protected by a utility model.

FilingThe new law prescribes that patent applicationsconcerning inventions made in Spain must befiled first at the Spanish Patents and TradeMarks Office (SPTO). Even if the old law alreadyhad a similar provision, it is now more impor-tant than before to abide by the law and36

WWW.MANAGING I P.COM

How the newSpanish PatentLaw affects yourfilings and rightsChanges in Spain’s new Patent Law affectpatentable subject matter, filing and litigation.Anna Barlocci, Yahel Contreras and Mathieude Rooij of ZBM Patents & Trademarksexplain

SPAIN

applicants having R&D facilities in Spain maywant to take note.

The first filing requirementIn a nutshell: for an invention that was made inSpain, a PCT application or a European patent ap-plication will have no effects in Spain, unless it isfiled at the SPTO, or claims priority from an ear-lier application filed at the SPTO.

This applies to PCT applications having aninternational filing date on or after April 1 2017that choose the national phase route for Spain,and to European applications having a filing dateon or after April 1 2017 that are validated inSpain.

Before, it was not uncommon for applicantsto file PCT or European patent applications di-rectly at the EPO for inventions made in Spain,since the previous law did not tie any specific con-sequence to these filings. These applicants maywant to reconsider.

Made in SpainThere is no definition in the new law of what ismeant by realizado en España, which may betranslated as made, done or carried out in Spain:the law does specify that an invention is deemedto be made in Spain if the applicant has its domi-cile, registered office or permanent address inSpain, but this is merely an assumption.

If the invention is made in Spain, for exam-ple because a foreign applicant has research fa-cilities in Spain and an invention is developedthere, then the first filing should be made at theSPTO, and the fact that the applicant is a foreigncompany merely shifts the initial burden of proofto a third party challenging the effect of thepatent in Spain.

What about multiple inventors working inseveral countries? Unfortunately (but not surpris-ingly, taking into account this issue remains un-solved in most countries with first filingrequirements), the new Spanish law does not37

EUROPE I P FOCUS 2017

SPAIN

specifically address the situation. Under the newlaw it is now possible to request clearance at theSPTO to first file abroad.

What kind of application can be filed at theSPTO, and what are the formal requirements ineach case?PCT, European and national applications may befiled at the SPTO under the new law. A PCT appli-cation must be filed in Spanish, and this will be thelanguage of the PCT and the authentic text for allintents and purposes. The EPO may be designatedas International Searching Authority if desired, butan English translation is needed in this case.

A European patent application may be filedwith the SPTO in any language, for example inEnglish, and will be forwarded to the EPO. Atranslation of the title and abstract into Spanishmust also be filed. A full translation may be re-quested by the Office, but this is unlikely at leastfor inventions that are clearly not related to na-tional security.

Spanish patent or utility model applicationsmay be filed in any language, for example in Eng-lish. A translation into Spanish has to be provided;however, if the application is only filed to establisha priority date and is then abandoned, a decentmachine translation would probably be sufficient.Indeed, a translation does not seem to be neces-sary for establishing a date of filing and obtaininga priority right. However, this is against the spiritof the law, which clearly intends to allow a na-tional security check.

In case it is not clear from the above sum-mary, let us state explicitly that it is not possibleto file a PCT application at the SPTO in English.

If you would like to have a PCT application inEnglish for an invention made in Spain, there area few options to consider. We would like to pointout that the wording of some provisions of thenew law may give rise to interpretations thatwould allow further strategies. However, such in-terpretations appear to contravene the spirit of thelaw, and we would therefore advise applicants toremain on the safe side.

Here are the main options that we considersafe when you want to draft in English:

First filing of a European patent applicationIf your current strategy involves using a Europeanapplication as first filing, then there is no problem:you simply file your first application under Article75(1)(b) EPC at the SPTO, including a translationof the title and abstract into Spanish. Unless theinvention is deemed of interest to national secu-rity and the application is declared secret by theSPTO, it will be forwarded to the EPO veryquickly, and you can pick up your usual PCT ex-tension strategy and procedure from there.

However, if in the past you used a PCT appli-cation as the priority filing, at the EPO or at an-

other foreign office, then you may need to makesome changes. Your best option may be to first filea European application, and use the priority rightto file a PCT at the EPO, either at the end of thepriority year, or as early as one month from thefirst filing. When filing the European patent appli-cation, an applicant can make a strategic choiceas to whether or not to pay the official fees.

If you are only interested in the priority right,you may file the European application withoutpaying official fees, and let it be deemed with-drawn after filing. The extra cost with respect toyour current strategy of filing a PCT applicationas first filing would be quite small. If you then filethe PCT right away, one month after filing the Eu-ropean application, you should still receive the In-ternational Search Report from the EPO in aboutsix months, under the Early Certainty FromSearch scheme of the European Patent Office.38

WWW.MANAGING I P.COM

SPAIN

Anna Barlocci Anna holds an MSc in mechanical engi-neering. She has worked in patents since1990, and is a qualified European patentattorney since 1999. She was one of thefounding partners of ZBM Patents &Trademarks in 2004. The firm has beenlisted in tier 1 in the ranking of ManagingIntellectual Property since 2007, and hastwice received the Spanish Patent Prosecu-tion Firm of the Year award.

Her professional experience includesdrafting and prosecuting patent applica-tions worldwide in a wide range of engi-neering fields. Her work also involvesadvising clients on substantive aspects ofthe patent system, from detecting valuableinventions and building an efficient portfo-lio to dealing with infringement, freedomto operate and due diligence. She often actsas a technical patent expert in validity andinfringement proceedings before the Span-ish courts, and has been involved in severalpan-European cases in fields ranging frommedical devices to elevators.

However, for the same cost, you might alsobenefit from the possibility of adding develop-ments to the PCT, by filing it at the end of the pri-ority year. The downside here is that you will notreceive the International Search Report in the pri-ority year.

Applicants may also file the European appli-cation paying the official fees: the EPO will pro-vide the European Search Report in six months,and applicants can file the PCT at the end of thepriority year, adding new subject matter and/orusing the PCT Direct service to amend/defend theclaims. The cost of this option is of course higher,but it may be very good value for money depend-ing on the circumstances.

As a side note, if a positive opinion from theEPO during the PCT phase is important to you,this might be the best strategy: if the first opinionis not what you hoped for, you have the chance of

defending your claims for free with PCT Direct, in-stead of paying the rather high fee in InternationalPreliminary Examination (which will still beavailable if you fail in your first attempt at convinc-ing the examiner). You may also recover at leastpart of the European search fee.

First filing of a Spanish patent application Another possibility is first filing a national Spanishapplication in English, with a translation intoSpanish. You are then free to file the PCT at the re-ceiving office of your choice, and you get an addi-tional Search Report from the SPTO in about sixmonths, which can be useful at least as additionalinformation. The priority document is issued bythe SPTO in English.

It should also be possible to file the applica-tion without paying any fees, just for obtaining adate of filing, but in the first days of application of39

EUROPE I P FOCUS 2017

SPAIN

Mathieu de RooijMathieu de Rooij started his career inpatents in 2002 at the European Patent Of-fice. During five years he worked as an ex-aminer in diverse technical fields. His tasksinvolved search and substantive examina-tion as well as document classification. Hewas also involved in the training of new-comers at the EPO.

While at the EPO, Mathieu passed theEuropean Qualifying Examination in 2007.In 2008, he moved to Barcelona to joinZBM Patents & Trademarks. He became apartner of ZBM in 2011. In the same year,he obtained the he obtained the Europeanpatent litigation certificate, which willallow him to represent clients before theUnified Patent Court. His practice focuseson European patent prosecution includingoppositions and appeals, as well aspatentability and freedom-to-operate stud-ies. He also regularly acts as a technical ex-pert in Spanish court cases.

Yahel ContrerasYahel is a Spanish patent and trade markattorney and has a law degree from Uni-versidad Católica Andrés Bello, Caracas(Venezuela) and a homologation to a lawdegree from the Universidad de Alicante(Spain). She is a member of the BarcelonaBar. She has postgraduate qualificationsand specialisation training in intellectualproperty both in Venezuela and in Spain,including a postgraduate degree from theInstituto de Derecho Industrial of the Uni-versidad de Santiago de Compostela(IDIUS-USC), and a masters degree in in-tellectual property and the information so-ciety from ESADE.

She worked as a lawyer and as a con-sultant in IP matters for several years bothin Venezuela and Barcelona prior to join-ing ZBM in 2005. At ZBM, Yahel is the headof both the international department andthe legal department, coordinating IP fil-ings and prosecution worldwide, as well asproviding legal advice in-house and toclients including the drafting and analysisof IP contracts.

the new law this is proving more complex than itshould be. In any case it does not appear to haveany significant advantage over filing a Europeanapplication without paying fees.

First filing of a PCT applicationYou may of course translate your draft into Spanishand first file a PCT application at the SPTO; youmay obtain the international search from the Euro-pean Patent Office by filing also your English text.

However, aside from the cost and delay fortranslating the draft, there is another drawback inthis strategy: your authentic PCT text is a transla-tion, and there is no possibility of correcting trans-lation errors based on your original draft.

Do you really want to first file a PCT applica-tion outside of Spain? Well, don’t despair: there isa way! All you need to do is request an authorisa-tion from the SPTO. The procedure is simple: youfile the request, attaching the text you intend to fileabroad and a full translation into Spanish. Thereis no official fee involved, and the Office will issuea reply within one month.

The PCT in English may then be the first fil-ing. The drawback is obvious: once your draft isready, you will have a delay of up to one month be-fore you can get your priority application filed. Log-ically it should be possible to use an early draft ofthe application to file the request, so as to min-imise the delay, but this is not what the law says.

ProsecutionThe most significant change in prosecution is thatsubstantive examination became obligatory for allpatent applications filed on or after April 1 2017. Be-fore the new law, substantive examination was op-tional, at the request of the applicant. Manyapplicants avoided substantive examination and ob-tained granted patents with possibly broad, andoften too broad, scope of protection. Now, all Span-ish patent applications but also PCT applications en-tering the national phase in Spain will have to gothrough examination. If protection is desired for aPCT application in Spain and one or more additionalcountries in Europe, the option of going through theEPO might be even more attractive than opting forvarious national applications, since the automaticgrant in Spain is not available anymore.

Moreover, third parties will have the possibilityto file observations regarding pending patent appli-cations and examiners can take these observationsinto account. Additionally, a new procedure is cre-ated to oppose the grant of a Spanish patent at theSPTO within six months from grant. The oppositionprocedure appears to be mirrored to the procedurebefore the EPO. Similarly to the EPO, patent propri-etors now have the possibility to limit claims in aprocedure at the PTO after they have been granted.

These changes regarding Spanish patent ap-plications may make the option of obtaining a util-ity model more attractive. Utility models in Spain

have a maximum life of 10 years and are grantedwithout substantive examination.

There is however a significant change in thedefinition of prior art when it comes to utility mod-els and now it includes disclosures anywhere inthe world, as was already the case for patent ap-plications. Before, only national disclosures wereconsidered to form part of the prior art for utilitymodels, which in some cases made it very hardfor alleged infringers to have a utility model inval-idated. In this sense, the value of utility modelsmay have decreased a little bit, although they stillhave the advantage of requiring a lower level of in-ventive step.

Also, when it comes to litigating a utility model,a right holder must request a prior art search andaccompanying written opinion from the SPTO be-fore bringing charges. It is likely that the opinionexpressed by the examiner in such a search reportwill carry significant weight in a lawsuit.

LitigationThe new Spanish patent law also brings about sig-nificant changes in litigation. First, a small num-ber of specialised courts to hear IP cases areestablished. In Barcelona, Madrid and Valencia,specific commercial courts will have exclusive ju-risdiction for patent, design and trade mark cases.Concentration of hearings in these courts shouldlead to further judicial specialisation.

A further change in the law that should helppatent owners is that the possibility of amending theclaims in a lawsuit is now formally recognised.Moreover, a court can now recognise partial valid-ity of a claim. These two changes can help patentowners to enforce their patents against infringers.

The possibility of filing of protective letters be-fore the courts to reduce the risk of receiving anex parte preliminary injunction is now formallylaid down in the law. According to the Law, theprotective letters will however be communicatedto the patent proprietor, which may be consideredas a downside. On the other hand, in recent years,the courts in Barcelona have adopted rapid actua-tion protocols in order to quickly institute proceed-ings in relation with renowned trade fairs such asthe Mobile World Congress. These protocols haveled to preliminary injunctions being handed downeven on the first day of the Mobile World Congress.Protective letters might therefore be an interestingdefence in relation to these trade fairs.

New threats and opportunitiesThe new Spanish patent law brings about changesin prosecution and litigation in Spain that repre-sent new threats and opportunities. It will proba-bly also affect filing behaviour for inventionsmade in Spain and applicants have various possi-bilities, each with advantages and disadvantages.Stakeholders are well advised to take note of thesignificant changes.40

WWW.MANAGING I P.COM

SPAIN