Spanish Patents

Spanish Patents

Protection of Spanish Patents & Utility Models

Spanish Patents & Utility Models

Protect your patent in Spain

A Spanish patent grants its holder the right to prevent others from exploiting an invention; making, using, offering, selling or importing the invention for commercial purposes without the owners’ consent in the whole territory of Spain. The granted right is limited to 20 years from its filing date. Patenting your invention is Spain is the most effective protection against infringement and unfair competition, considering that a successful patented invention will inevitably attract other competitors.

Patent Protection in Spain

Why Spain?

Considering that our country is among the first European and global economies, its geostrategic location, population and fiscal incentives, protecting your invention for the innovative products or processes you trade in the Spanish market can be relevant for your ROI, no matter what the size of your company is or industrial sector in which you are doing business. See more

 

Main Points of Patent Protection in Spain 

Spanish Patent & Trademark Office (SPTO)

National Office

National Patents and Utility Models in Spain are ruled by the Spanish Patent and Trademark Office (OEPM) based in Madrid, Spain.

Law

The applicable Law No. 24/2015 that entered into force on April 1, 2017 has adapted the Spanish regulation to those of the main international patent systems of neighboring countries, strengthening the patent grant procedure in Spain and hence leading to higher quality national patents. This repealed the previous Law No. 11/1986 on Patents. 

First to File System

Spanish patents are protected on a first-to-file basis. All rights in a Spanish Patent or in a Utility Model dates back to the filing date and not when the invention is granted, but the right may be enforceable the publication of the mention of grant and from the period taken of when the patent application was published. 

Who May Apply?

All natural persons and legal entities, regardless of their citizenship or residence.

Type of Patentable Inventions.

Inventions in Spain can be protected by a Patent or by a Utility Model, depending on the field, the nature and complexity of the invention.

  1.  Invention Patents. A patent in Spain can be processes and methods, machines and apparatus, articles of manufacture, compositions of matter products, or any improvement of these, which must be new (absolute novelty), involve an inventive step (not obvious for a skilled person in the industrial field) and be industrially applicable (useful). Furthermore, the technology is to be sufficiently described within the specification in a way that a skilled person in the field can be able to replicate the invention. Patents are granted for a term of 20 years. Patent applications must undergo a mandatory prior art search, as well as a preliminary and substantive examination where the two main patentable requirements (absolute novelty and inventive step) will be assessed by the Spanish Office, very similar to those conducted in other major patent offices in the world. It may take about one year up to three years to complete prosecution, depending on the type of grant system chosen by the applicant; Accelerated or Ordinary Grant Procedure.
  1.  Utility Models. Some kind of simple technical innovations and apparatus which might not qualify for a patent can be protected as Utility Models in Spain. This kind of protection is particularly suitable for simple tools, objects and devices used for practical purposes or compositions, including chemicals compositions excluding biological material and pharmaceutical substances or compositions. In some other countries these short-term-patents are called “petty patents” or “small patents”. Products that do not have structural features, by means of rules, methods and compositions of matter cannot be filed as a UM in Spain. The main differences of a Spanish Utility Model compared to a Patent, can be summarized as follows:

a) The maximum duration of a UM is of 10 years (therefore, annuities must be paid for years in advance from the 3rd up to 10th, after the publication of grant) instead of the longer term of protection for patents (20 years).

b) Novelty (absolute) requirement for UMs is the same as that for a patent.

c) Inventive step requirement for a UM is somehow lower than the higher non-obviousness degree required for a patent.

d) The UM process is shorter; it may take about 8 from its application date for straightforward cases and up to 14 months until a decision is made for opposed UMs. For patents this may take from 12 months up to 36 months, depending on the preferred grant procedure.

e) Unlike patents, UMs must not go neither through a substantive examination nor an ISR (prior art search) to assess its absolute novelty, but they are just published in the Official IP Bulletin for possible third party’s opposition to be filed within 2 months from its publication date.

Priority Claim

Spain is member of both the World Trade Organization (WTO) and of the Paris Convention for the Protection of Industrial Property, allowing applicants of a first Spanish Patent or Utility Model application to claim a right of priority within a non-extendable period of 12 months (one year) from the application date, either for an international PCT patent application and/or for a patent in other regional or national Offices abroad party to the Paris Convention. Also, nationals of any signatory country or domiciled in a member state of the WTO may claim their one-year-right of priority from the earliest patent application when it is being extended nationally via the OEPM as a Spanish Patent or a Utility Model.

Validity and Maintenance

Patents are granted for a term of 20 years from the date of application, as long as they are maintained by paying the annual renewal fees from the 3rd up to the 20th (3rd to 10th for Utility Models). An exception is made on supplementary protection certificates (SPC) for drugs, medicinal products and phytosanitary goods, where requests may be granted for up to 5 years, additionally to the expired 20-year-term.

Granted Rights

While your patent application is being examined you may refer and apply to your invention the “Patent pending” definition. Once your patent is granted you can then use the “Patented” description on all your business’s marketing material of your invention, confirming the protection of the invention and act as a warning to any infringers and unfair competitors seeking to copy or imitate your technology.

Courts for Patent Infringement

Legal actions concerning infringement or unfair competition o patents or utility models in Spain are to be taken before the competent Commercial Court located in the city of the Higher Court of Justice within the autonomous community where the defendant is domiciled, or alternatively where the infringement has taken place or had the effect.

Common Mistakes and Suggestions

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How Abecsa Can Help You

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Spanish Patent and Utility Model Procedure and Time Scale

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Information and Requirements to File a First Patent or a Utility Model Application in Spain

  • The full name and address of the applicant(s)-holder(s).
  • The full name and nationality of the inventor(s).
  • The nationality or country of establishment of the applicant(s)-holder(s).
  • VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
  • Full details of the invention on how the given technical problem is solved by your invention.
  • The details of the application on which Convention Priority is to be claimed, if appropriate, within 12 months from first application date, along with the Certificate of Priority.
  • Your instructions on how we should proceed and approval of the likely costs.
  • Your upfront payment of issued invoice by bank transfer.
  • A POA signed by the applicant (no legalization) is required by this Office.

 

Contact Us

Via our contact form if you need advice on any patent issues such as:

  • Protecting your first patent in Spain.
  • Entering the national phase of a PCT in Spain.
  • Validating your granted European Patent in Spain.
  • Looking for prior art searching or a freedom-to-operate opinion and report.
  • Patent watching services.
  • Defending your challenged Spanish patent, from oppositions or appeals.
  • Revising and/or amending your patent draft by our engineer.
  • Opposing a Spanish patent or utility model filed by others.
  • Taking legal action against another person or company who is marketing or exploiting your invention in Spain without your consent.
  • Translating your patent specification into Spanish as the OEPM’s required local language.
  • Renewing your patent annually.
  • Licensing the use of your invention or selling your patent ensuring the assignment to other person or company.
  • Protecting your know-how and trade secrets.

 

Confidentiality

If this is the first filing of your invention, it is important that you do not disclose the technical characteristics of your invention before you apply for patent protection, this may mean that you cannot patent it, or your patent may be declared invalid by anyone who proves this preceding disclosure (lack of novelty or inventive step). However, you can safely discuss it with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.