Introduction
Proposed amendments


Introduction

On May 5 2014 the Spanish Patent and Trademark Office (SPTO) published the draft new Patent Act, as reviewed by the Council of Ministers in its April 11 2014 meeting.

Before the government and Parliament take further action, certain bodies must give their opinions, including the Economic and Social Council (which has already issued a report commenting on the draft), the General Council of the Judicial Power and the State Council.

Proposed amendments

The purpose of the new act, which would replace the Patent Act 1986, is to modernise the Spanish patent system and to bring it further into line with European and international legal frameworks. The draft proposes the following major amendments:

  • The existing general procedure for granting Spanish patents, which does not include substantive examination, will be removed. If the draft is approved as it stands, it will be compulsory to apply for patents through a procedure involving substantive examination of the patentability requirements (this is voluntary under the existing act, and most patent applicants do not choose it). In its recent report the Economic and Social Council expressed some concerns about this amendment, in particular its potential economic impact. Would most inventors apply for new patents at the European Patent Office instead of at the SPTO? Would the SPTO's workload be reduced, and if so, what impact would this have on existing public employees?
  • Application fees will be reduced for small and medium-sized companies.
  • The regulation of both labour inventions and compulsory licences will be simplified.
  • The state of the art for assessing novelty and inventive step of utility models will be the same as for patents. The existing relative novelty requirement of the Patent Act 1986 will be removed.

Regarding patent litigation practice, the most relevant change contemplated in the draft act is the possibility to limit a patent, both at the SPTO and in the course of court proceedings. At present, a national patent cannot be limited after granting.

Article 138(3) of the European Patent Convention enables the patentee to amend the claims within invalidity litigation:

"In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings."

However, the procedural aspects of such claim amendment lack specific regulation in Spain.

The absence of procedural rules in this regard has caused some conflicts and disputes in cases where the patentee was allowed to amend the patent within an ongoing litigation.(1) This is because, to date, many questions remain unanswered and Spanish procedural law does not provide solutions easily (Spanish civil proceedings are rather rigid in comparison to similar proceedings in other European jurisdictions). For instance, when can the patentee amend the patent? How and when can the party arguing invalidity react to the limitation? Are auxiliary requests admissible and if so, how many? These are just a few examples – many more difficulties arise in practice.

Article 119 of the draft Patent Act deals with some of these issues by providing some procedural rules intended to safeguard the rights of all parties. In addition, the existing prohibition on declaring the partial invalidity of a claim (Article 112.2 of the Patent Act 1986) will be removed.

Presumably, the existing draft will be subject to amendment before it is finally enacted, especially since some key aspects of the draft remain controversial.

For further information on this topic please contact Miguel Gil at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email (m.gil@gba-ip.com). The Grau & Angulo website can be accessed at www.gba-ip.com.

Endnotes

(1) See Docetaxel (court order of July 6 2011, Commercial Court No 1 of Granada); Ibandronate (court order of January 20 2012, Commercial Court No 7 of Barcelona); and Tiotropium (court order of September 30 2013, Commercial Court No 1 of Barcelona).