The Spanish Parliament recently passed Law 24/2015, an in-depth amendment of the Spanish Patents Act (“LP” in its Spanish acronym). The changes introduced radically alter the patent landscape in Spain in various ways, although the new version of the LP will not enter into force until 1 April 2017.
The first significant change introduced by Law 24/2015 is the possibility to file patent applications based on “Swiss-type” claims. Therefore, chemical substances which are already patented (and thus would not meet the novelty requirement set forth in the LP to be patentable) can be protected under a new patent as long as they can be used for a different medical application to that of the original patent.
Probably one of the most significant modification of the Spanish patent regime regards the existence of “weak” patents (i.e. patents which have been granted without undergoing a previous review to determine if they meet the novelty and inventive step requirements set forth in the LP). Currently, applicants may choose whether their patent application should undergo an analysis to determine whether it meets all three patentability requirements established in the LP (novelty, inventive step and industrial applicability) or just one of them (industrial applicability). Those patents which have been granted after undergoing the full analysis are considered to be “strong” patents, while the rest are considered “weak” patents. The version of the LP to enter into force in 2017 eliminates the latter type of patents, thus requiring that the Spanish Patent and Trademark Office determines whether any patent application meets all the patentability requirements set forth in the LP.
As a consequence of this, the current opposition system against patent applications pending to be registered will disappear. Instead, a post-registration opposition system will be implemented.
Another important amendment is the separation of two key exceptions to patent enforceability: the use of a patented invention for experimental purposes and the “Bolar clause”, currently contained in the same (and somehow confusing) article of the LP. By splitting said article, these exceptions are now more clearly outlined. The first of these exceptions sets forth that patented products may be used for experimental purposes without requesting the patent holder’s authorization, as long as any experiments take place focusing on the patented invention and do not merely use it in the experimental process. Additionally, the “Bolar clause” allows third parties to use a patented medical drug to perform all the necessary tests and trials in order to obtain an authorization to commercialize a generic version of said drug. This includes the development, acquisition and use of the active ingredient for the aforementioned purposes.
Moving on to the civil actions which can be exercised against patent infringers, Law 24/2015 expressly establishes the possibility of filing a prohibition action to prevent an infringement which has not yet taken place. Another relevant point is the express introduction of the possibility for the patent holder to request documents from an infringer in order to determine the amount of damages it has to pay. Nonetheless, Law 24/2015 also states that, when requesting documents for the aforementioned purposes, the impact on the trade secrets of the infringer must be taken into consideration.
To further improve the compensation regime for patent holders, Law 24/2015 clarifies certain aspects on how to calculate damages to be paid by the infringer. Moreover, coercive damages are introduced, which are likely to deter infringing conducts.
Regarding patent validity, the current version of the LP does not allow for an individual claim to be declared partially invalid. Nevertheless, Law 24/2015 does allow this, offering more flexibility for judges. This change is also a positive step for patent holders, which can now limit the scope of their patent claims during a trial in order to avoid the invalidity of the whole patent.
Another matter which has been considerably modified is the regime regulating the ownership of inventions created by employees or third parties hired for research and development purposes. The employee’s obligation to inform in advance the company hiring him/her of any inventions which s/he has created has been reduced from three months to one. Regarding inventions created by employees who are not tasked with research and development purposes, the company has three months from the date in which it received the communication to decide whether it wants to patent the invention, in which case it would have to pay the employee a compensation. If the company does not issue any communications within the aforementioned three-month period or if, after doing so, does not file a patent application within a term agreed with the employee, then the employee will be entitled to file the patent application himself/herself.
One important novelty introduced by Law 24/2015 is that, should an employee develop a non-patentable technical improvement that grants the company some kind of competitive advantage when exploited as a trade secret, the previously mentioned obligation to compensate the employee would apply.
Finally, the current version of the LP establishes that any patent applications filed by an employee or a contractor in the year following the end of their employment or contractual relationship may be claimed by the company which hired them, thus becoming the patent holder. Law 24/2015 gives the former employee/researcher the chance to prove that those inventions for which a patent application was filed were actually developed after their relationship with the company ended, therefore allowing them to block any company claims over them.
Law 24/2015 introduces other changes, such as the strengthening of utility models, a unique figure of the Spanish legal framework aimed at protecting minor inventions. One clear conclusion can be reached from this recent legal development: Spain has finally modernized its patent legislation, which is now on par with the rest of the countries in the European Union. Nevertheless, the inclusion of Spain in the European Patent framework remains an open issue.