While we could simply point you, for example, towards the website of the European Patent Office, or the Spanish Patent and Trademark Office (which, of course, we strongly recommend you to visit and see the “seven deadly sins of inventors”), we prefer to do our own work, and based on our experience drawing attention to some of the most important problems many patent applicants face. Therefore, before taking any action, and even before taking any decision involving the risk of losing opportunities to protect an invention, investment risks, risk of losing fruitful collaborations or the like, we would like to comment below on some fundamental and essential rules governing patents:
In any action related to the protection of an invention through a patent, observing and meeting deadlines is essential. Because an invention must not be disclosed prior to filing a patent application, it is essential to take into account that:- disclosing the object of this invention before filing a patent application will not allow
- with some exceptions – to have a patent granted for that invention,- filing a second patent application for an invention after the deadlines established by international conventions totally invalidates this second patent,- any breach of a deadline often means higher spending on the achievement of the patent, and in some cases the complete loss of the right.
Continuing with the importance of meeting deadlines when dealing with patents, a particularly special one is the deadline established by the so called priority period. This is a twelve month term at the applicant’s disposal, which enables him/her to file a patent application in other territories, maintaining the filing date of the first application. The twelve month period starts on the day the first application is filed.The advantage the priority period provides is that the applicant has this time at his/her disposal to reach decisions about the object of the application, to further develop the invention, as well as to decide the best marketing strategy. At the same time, the applicant postpones the moment of incurring the cost involved in the extension of the patent application. For more information on the priority right, you can consult the text of the Paris Convention, 1883 (www.wipo.int
We must not forget that a patent application, or a patent, is a legal document. We therefore will not be able to modify it at the moment nor in the way we would like to. A direct consequence of the legal character of a patent is that the original text of the patent application has to be drafted in such a way that it allows us to correctly determine the scope of protection for the invention, and that will allow us to make draft modifications in conformity with the law of any country. We therefore must not forget that the impossibility imposed by the laws of freely modifying a patent application may have severe consequences for the applicant.
Patents have – from a geographical point of view – a strictly territorial protection scope. This means that – for example – a Spanish patent only produces its effects in Spanish territory, and therefore, outside Spain anybody can use the object of the patent without infringing any right.
Upon having reached a decision on the strategy for the protection of an invention, the following types of patents may be applied for at the Spanish Patent Office (SPO):
For filing a Spanish application the essential requisites are as follows:- Complete text with title, figures (if any) and abstract
- Complete data of the applicant: full name, nationality, address and fiscal
- Complete data of the inventor: full name, nationality and address
- Information on the way the inventor transfers the applicant the right to apply for a patent
- Filling out and signing an application formand in the case that there is a representative in charge of the application:- Authorization signed by the applicant – in case the application is filed by a patent attorney –- Data for the identification of the representativeOnce the application has been deposited at the SPO, we have the twelve month priority period according to the Paris Convention, mentioned above, for the extension of the application to other countries, maintaining the initial filing date.
To file a European patent application the essential requisites are as follows:- Complete text with title, figures (if any) and abstract (the text can be in Spanish at the moment of filing)
- Complete data of the applicant: full name, nationality, and the state in which his residence or principal place of business is located.
- Designation of the inventor
- Filling out and signing the Request form (1001 form)
- Data for the identification of the representative (if appropriate)Once the application has been deposited at the SPO, we have the twelve month priority period for the extension of the application, as mentioned above for the case of a Spanish patent application.
To file a PCT application the essential requisites are as follows:- Complete text with title, figures (if any) and abstract (the text must be in Spanish)
- Complete data of the applicant: full name, nationality, and address
- Complete name of the inventor
- Filling out and signing the Request form
- Data for the identification of the representative (if appropriate)Once the application has been deposited at the SPO, we may extend it to other territories in two ways:- During the twelve month priority period, maintaining the original filing date, we may extend the application to any country pertaining to the Paris Union Convention, under the same conditions as those mentioned above for a Spanish or European application- During two and a half years (or 31 months in some cases), under the provision established by the Patent Cooperation Treaty, this term applying to any member country or set of member countries of the PCT.
Finally, before thinking about drafting and filing a patent application, it is essential not only not to have disclosed the invention, but also having made a state of the art search to ensure that the investment in time and money is not converted into something useless. The patent we intend to obtain must protect an invention that is novel, is not obvious – this is, with inventive activity – and must be industrially applicable.
We could hugely extend the preceding points, but we prefer to address you to specialized web pages for more information, or invite you to get in touch with us. Even though we tried to introduce the above short sections following some order by relevance, it has been really difficult to reach a decision in view of the very, very high importance of aspects such as timelines, confidentiality and the like.We therefore, emphasize that the above sections are just a brief introduction to the patent world.It is likely that to have read the preceding paragraphs have made you realize that everything is more complicated than you ever thought, and that you may need the help of a professional…. In that case, we welcome you to get in touch with us by email, telephone or through LinkedIn
.We should state that, as Spanish nationals, or Spanish residents, you do not need the intervention of a representative in order to file patent applications with the SPTO or the European Patent Office. Nevertheless, both organisms recommend using the help that a patent attorney can offer, in view of the difficulties during prosecution of patent applications.For more information on any aspects related to patents, some of the following links are very useful and recommendable:www.oepm.es
: everything that can be of interest to us about drafting, filing and prosecuting a patent application, how to obtain a license, or to sell a patent, what it is and how to maintain a survey on a particular technological topic etc.www.epo.org
: all the information about European patent and European patent applications, data bases, links to other patent offices etc.