New Spanish Patent Law
Since 1 April 2017, a new Patent Law has entered into force.Read news
Mandatory substantive examination (articles 39-40).
The current "no review" optional concession procedure disappears. A single licensing procedure is established with substantive examination of patentability, which includes a review of novelty and inventive step. As a result of this substantive examination, a patent application may be granted, either in its original version or in a version modified by the applicant, or may be denied.
Post-concession opposition (Article 43).
The opposition procedure becomes post-concession. The period for the presentation of oppositions is six months from the publication of the grant of the patent in the Official Gazette of Industrial Property (BOPI).
The patent for addition disappears.
The figure of the "patent of addition" disappears, which in Law 11/1986 allows to add forms of realization or improvements to a patent granted and in force without having to comply with the requirement of inventive step. This possibility does not exist in the new law.
Absolute novelty (Article 138).
The requirement of "national novelty" established in Law 11/1986 disappears. The requirement of novelty becomes the same as for patents (absolute novelty).
Reduced inventive activity (Article 140).
The requirement of less inventive step established in Law 11/1986 is maintained (the level of inventive step required for a utility model is lower than that required for a patent).
Inventions protected by a utility model (Article 137).
Products are included as inventions protected by a utility model, but excluding inventions relating to biological material and pharmaceutical substances and compositions. The exclusion regarding procedural inventions is maintained.
Obligation to obtain a Report on the State of the Art in order to exercise actions (Article 148).
The processing of a utility model application does not include a background search or a substantive examination of patentability. However, for the exercise of actions relating to exclusive rights derived from a utility model, a State of the Art Report (EIT) must have been obtained or requested in advance. This is the same EIT that is made by the Spanish Patent and Trademark Office (OEPM) for patent applications. The EIT made for a utility model is notified to the petitioner and made available to the public by the SPTO.