A new Patent Act nº 24/2015 (“Patent Act”) of 24th July 2015 was published in the Official State Gazette. Although it will not come into force until 2017, there are some interesting features.
A) Patentability requirements
First of all, the new Patent Act continues the doctrine of the European Patents Office (EPO) that methods of therapeutic or surgical treatment are not patentable, but the products and/or procedures used in both methods are patentable. (art. 5.4).
This is in accordance with the resolution G2/08 of the Technical Council of the EPO, nuanced by section 4 of article 6, where the use of substances or products which are used in methods of therapeutic or surgical treatment are considered novel, provided that such use is not previously disclosed in the state of art.
Finally the new Patent Act clarifies the patentability of the genes in line with the latest decisions of the EPO and the Supreme Court of United States. Accordingly, a mere DNA sequence without any biological indication is not patentable.
B) Labour inventions
In this area, the intention of the change is in certain circumstances to strengthen the relationship between the holder of the title to the right (employer) and the inventor (employee). It applies in those often uncertain and vague situations now defined as “inventions taken on by the business owner” (i.e. inventions in which the employee predominantly used knowledge or means acquired or provided by the employer but that was outside the scope of his/her work contract). In this regard, a period of time is set where the employer can take effective ownership of the invention.
More ground breaking is provision for the compensation that an employee can claim for the development of technical non-patentable improvements that can give a competitive advantage to the employer by exploiting them as a trade secret. For disputes on this issue it is still possible to have a reconciliation before the Conciliation Commission of the Spanish Patent and Trademark Office (OEPM). However, this is no longer mandatory and is only done on a voluntary basis.
Similarly, an entire article (art. 21) is dedicated to research undertaken by personnel of Public Universities and Public Research Offices in an attempt to motivate this source of talent in Spain and to further the impact of universities on economic development.
C) Granting procedures for patents and SPC’s
One of the main novelties that arose out of the new Patents Act is that the existing dichotomy regarding the different granting systems is terminated. From now on, the only available procedure shall be by examination analysing the novelty and inventiveness in order to obtain “strong” patents.
The Law makes a reference to the Supplementary Protection Certificate on medicines. However, their requirements and impacts are not regulated since they are already established in the Community Regulation EU 1768/1992.
D) Impact of the patent
Regarding the right to prohibit (i.e. ius prohibendi), the concept of “offering” is clarified, by identifying it with a clear commercial perspective of “for sale”.
As an exception to this ius prohibendi, a historical mistake has been amended. This is the mixing of the exception of experimental use with the regulatory exemption use (“Bolar Clause”).
There is also a better definition of the budgets for actions for damages and a coercive and a discredit compensation. The new regulation incorporates the judicial trend of postponing the quantifying of damages to sentence enforcement. Although the basis of calculation is to be included in the sentence.
Compulsory licenses are adapted to the Intellectual Property Rights related to the relevant trade and the limitation and modification of claims at the judicial court during the processing of nullity proceedings is also permitted.
E) Legal proceedings
The new Patents Act increases the right to bring actions to both the registered rights holders and to those who can prove the appropriate registration of the legal or business transaction relating to the right intended to be asserted (provided that the registration has been granted).
It extends the deadlines to answer claims and counterclaims as it allows a period of two months, where the inability to submit a joint expert report to those briefs is justified.
For Anton Piller actions, it establishes a process for examination by the Judge that allows the designation of an expert to assist and keep the actions of both parties secret at all times (for the claimant party, regarding the content of the obtained information until its presumed infraction is verified and as for the defendant, regarding the request for proceedings).
Regarding the precautionary measures, the new Act provides for consent to the termination of the measures in the event of a first instance sentence that is unfavourable for the title holder, with the risk and damage that it would entail in case of an appeal favourable to its interests.
Finally, it includes the possibility of resolving conflicts out of courts through arbitration or mediation, except in excluded matters of free disposition, like those related to granting proceedings, validity or nullity.