Spanish patents for the XXI century

thumbWe have to make a break in our discussion on patent databases and search tools for briefly commenting on the draft bill for the establishment of a new Spanish Patent Law. It was approved by the Council of Ministers two days ago. According to the media, it will help in accelerating the granting of patents. However, we do not think that this will be the most important aspect thereof. In the (first) draft bill published in October 2013  several paragraphs illustrate the grounds for the new law (link: below:

(https://www.aippi.org/enews/2013/edition33/images/Anteproyecto.pdf) .

 You may remember as a joke that a patent on the wheel as a “circular transportation facilitation device” was granted in Australia in 2001!, also unbelievable for a developed country. This story could just as well have happened in Spain. Therefore, maybe, one, if not the, most interesting aspect is that, finally, no one will have a patent granted in Spain for the steam engine. Because, until now, it was still possible!, just because the substantive examination was not compulsory and no matter how bad the state of the art report could be, the applicant was not obliged to amend the claims to have novel and inventive claims. Naturally, the application proceeded to grant and to invalidate the “junk” patent you had to file a suit before the court. As patent attorneys, we understand those clients that came to our office to entrust us with the filing of an application for the protection of the distillation procedure. As long as the patent was in force, it had the effect of a perfectly valid one. From now on (not yet, though!) the trick “I just want to have an application number to put the words “patent pending” on my product” will no longer work.

The pride of the Spanish citizens about our country being number nine in scientific publications did not fit with our current patent system, or with the number of patent applications of Spanish origin, or with the fact that Spain is a PCT Examining Authority since 2008.

A really sad reality is that for the last fourteen years in which the substantive examination has been optional, about 90 % (data from the Spanish Patent Office – SPO)) of the Spanish patents have been granted following the so called “general procedure”, in other words, without examination. This means that maybe someone still has to fight against the “wheel patent” within the next twenty years.

Other amendments in the new law will be related to the increase of the legal security and / or the adaptation to the European Patent Convention 2000 (EPC 2000) and the Patent Law Treaty. It was about the time to do this!. For example a post-grant opposition procedure will be established. The possibility of amending the claims during a legal procedure before the court will also be a main change.

Ninety pages of the document entitled “Draft Bill for a new Patent Law” (first draft, October 2013, second draft in December 2013) are to be carefully read. Surprisingly, apparently you cannot find said document through the web site of the SPO, or the Ministry of Industry, Energy and Tourism, but through web pages of industrial property firms and different associations like the AIPPI.

Welcome to the XXI century!

 Seni Cueto