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.
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
National Patents and Utility Models in Spain are ruled by the Spanish Patent and Trademark Office (OEPM) based in Madrid, Spain.
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 This repealed the previous Law No. 11/1986 on Patents.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.
- 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.
- 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.
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.
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
As patent practitioners, we observe some but very often mistakes made by inventors, which can jeopardize the patent process, affect its validity and protection or even can prevent the invention from being appropriately commercialized in the market or extended abroad. We should suggest you to:
Choose a Patent Agent
You can act on your own for patent filing, but if you have no proficiency in patent law practice, then you should be guided and represented by qualified patent professionals (a registered Spanish IP agent), who are specialized and skilled in the undertaking of every complex tasks with the Office, either for the search an draft of the patent claims before it is filed, as well as for duly attending the usual arising actions throughout the examination proceedings, helping you to ensure the desired success during the process and hence on the result and strength of the enforceable right obtained.
Protect Before Disclosing
The invention should be secretly kept until the date of filing, since that prior disclosure may destroy the novelty requirement of the patent.
Search Before Filing
Before applying for a patent, it is advisable to carry out a patent search and evaluate the prior art and near patents to ensure your invention is new. Conducting a patent search is a smart first step to take before investing a lot of time and money into the patent process (not just a simple Google search to know if the product exists). Not only will you know if there are any similar patents in the prior art, you will be able to use the results to better define your invention.
Marketability of Your Invention
You should figure out whether potential consumers will have any interest in the invention. Sometimes, inventions are not commercially attractive; they are not marketable and consumers or manufacturers show no interest on the patent or on its exploitation. The solution to a given problem is not completely solved, it is too complex or the idea of the value of the invention is impractical.
Do not wait for someone to buy your patent. If you will not be directly engaged in the exploitation of your invention, then you should actively promote it towards manufacturers, distributors, retailers or to anyone operating in the particular industrial field of the invention. This task should be done continuously, from the moment you have obtained the official receipt that confirms the filing of the patent application, so you can seek meanwhile for the needed investment, co-funding from anyone who is potentially interested in participating jointly with the costs for the extension of your patent rights abroad, or in the local marketability of the invention in exchange of a license agreement.
How Abecsa Can Help You
We can advise you if you are deciding on a valuable patent protection strategy and planning, you want to license your patent, or if your invention is being infringed by others and you want to take effective enforcement action in the competent Commercial Court. We would comply with the local practice and smooth the prosecution step by step and will always propose and take the best solution to overcome any official objection that arises during the procedure by taking care of the scope of the invention as well as foreseeing possible situations that could happen in the future for each specific patent application. The value-added patent services we provide can be summarized as follows:
Plan Your IP Strategy
We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to attain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Our registered attorney and other in-house patent professionals can represent you and assist you in all the patent process if you want to protect a Spanish Patent (OEPM) and later on, if you would like to extend your patent priority right internationally. Our fees for patent filings and prosecution are fixed for each stage in this national Office of our jurisdiction so you can foresee the estimated costs for your patent protection project in Spain.
We may carry out an in-depth prior art search worldwide referring to the technical information you have provide us, which would allow us to find if your invention has not been patented, before we draft your specification and apply for the desired patent on your behalf. This comprehensive search with our written report and a risk assessment is conducted by using tools and databases that are not publicly available. A good patent search can save you time and a fortune in wasted resources, efforts, incurred significant promotional costs, and to evade your potential legal liability in exploiting by mistake a very close technology to someone else’s patented rights. This is a highly skilled and complex work that should be conducted by a specialized patent practitioner.
Patent Drafting and Filing
The initial strategic steps are decisive to achieve success in the future with your invention, therefore we take particular care and assist with the following features:
to Protect Your First Patent
We can plan which would be the best Office to file your first patent application (priority), either National, European or Internationally, depending on the countries where you will likely market your invention, which we will electronically file in your name.
What & How to Protect
Our in-house patent professionals can help you identifying and protecting only what is technically valuable, from the material you provide us with and do not waste time or resources on getting a weak patent for those irrelevant matters. For this purpose, the inventor must provide us with all the relevant and detailed information in his hand to help us understand how the given technical problem is solved by the invention and allow our engineer to draft the best possible claims supporting specification, who will prepare and write in full, clear, concise, and exact terms of the abstract, description, backgrounds of the invention by citing and comparing the closest prior art documents, create the professional technical drawings if needed, and specify the claims that best describe your invention, being this the most important element of the patent draft, to be carefully considered and for which patent protection is sought. We will provide the preliminary patent draft for our client’s review and approval, before filing, within 15 to 20 working days, from the date we receive the full details of your invention or after the patent search is concluded.
When to Apply
Commonly, it should be filed as soon as possible, ensuring you are the first-to-file the patent.
The applicant(s) and hence the future ownership of the patent should be always held by the person or legal entity who will likely exploit the invention in the market.
Prosecution and Management
We will monitor the whole process of your patent application until it is finally granted and duly inform you of every official communication we receive from the Spanish Patent Office (OEPM), along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices well before the available time limits, in order to avoid extra charges or any resulting loss of rights.
Extension of Supplementary Protection Certificates (SPC). We service agrochemical and pharmaceutical companies to extend their patent protection in Spain once the 20-year-term has expired, by requesting a Supplementary Protection Certificate (SPC) for up to five years; for medicinal and phytosanitary products, which typically involve a long time in obtaining a regulatory authorization to be marketed.
– Office Actions. If your patent is objected by the Spanish Office based on formal requirements or on patentability provisions or opposed by a third party, we may study the grounds of the objection or the relevance of the prior right on which the opposition or observations have been founded and file either the amendment or an Office action response in defense of your rights within the given deadlines, by planning the adequate strategy so we can desirably ensure success and obtain a strong patent protection, and hence a solid enforceable patent protection. Assistance is also provided if you want to oppose or file relevant observations against a likely invalid conflicting application, by preparing the needed technical and legal observations in support. We may require you to provide us relevant details or proof in support of our comments, facts or evidences to be alleged in the single exchange of observations during the opposition and appeal proceedings. – Litigation. In enforcement, we can represent and assist either the plaintiff or the defendant in utility model and patent rights infringement proceedings or in a cancellation action procedure (Invalidity request) before the competent Spanish Courts.
We can handle any associated matter on Spanish patents such us the recordal of licenses, change of names and ownership transfers.
Abecsa will provide its clients with a local watch service in the Spanish and European registers, keeping an eye on what your competitors have filed. If we find a new published application that may be potentially conflicting with your prior patent, then we will send you an alert proposing you the filing of an opposition or observations within the statutory deadline of the Office.
Worldwide Patent Protection
After the filing your first patent or Utility Model application in Spain, we can help you choosing where else in the world would you or your company like to effectively protect your patent, by advising you about the available routes to patent protection worldwide; International PCT patent (WIPO), European patent (EPO), in other regional Offices (EAPO, OAPI, ARIPO, GCC) or even coordinate through our associates the filing in foreign individual national patent Offices, within the non-extendable priority period of one year for patent filing abroad, in view of the countries where you intend to exploit, manufacture or market your invention, and depending on the nature of your invention and budget.
Entering the National Phase of a PCT in Spain
The time limit to enter the national phase in Spain shall be on or before 30 months from the earliest filing date (priority) of your PCT patent application. The OEPM will examine your application in accordance with Spanish patent laws, regulations and practices resulting in the grant of a patent, if the process is positive.
Validation of European Patents in Spain
In order to obtain the effective protection in our country, a European Patent must be validated in Spain within 3 months after the publication of the mention of grant of the EP, by providing the translation of the specification as granted into Spanish or where relevant, the amended text when it has been opposed, filing the new text in Spanish (a sworn translation) within three months of the publication of the mention of the opposition decision. Optionally, and during the European phase, a provisional protection of a EP application can also be obtained in Spain, by providing a translation of the claims into Spanish before the OEPM.
Spanish Patent and Utility Model Procedure and Time Scale
Patent Grant Procedure. The main stages along the process are summarized as follows.
Filing of the Application and Admission for Processing
Within ten days of the filing, the patent application will be examined and an application number will be assigned if all the requirements for according a filing date are admissible, in which the filing date and the application date will be the same, being also admitted for processing. If, on the contrary, any deficiency is found, this will be notified to the applicant, giving him two months to correct them. If he does not do so, his application will be deemed to be desisted. If the cited deficiencies are remedied, the filing date would be modified by the date on which the new documentation in reply was submitted. If the filed specification is in a language other than Spanish, the applicant shall provide a translation into Spanish within two months from the application or from the date the OEPM formally requests it to be filed during examination, by applying the later expiring deadline.
Formal Requirements Examination
After its filing, an examination will be performed by the Office as to the minimum requirements for according a date of filing and the admission of the patent application, checking if the fees for the application and the State of the Art Report (IET) have been suitably paid, otherwise, the Office will provide a one-month period to duly do so. If any deficiency is found, the applicant will be notified so that these can be corrected within two months, but if the applicant fails do so, the patent will be denied.
Search and Written Opinion
The requested State of the Art Report (IET) will be carried out by the Office, provided that there is no lack of clarity or consistency that would prevent the report from being prepared, in which case the applicant will be notified to remedy the deficiencies within two months. In case of not doing so, the patent will be denied. After the Report has been carried out, the applicant will be informed of the report and result of the search with access to all the cited documents as well as with the preliminary and non-binding written opinion, on whether the invention complies with the patentability requirements; Absolute novelty, involves inventive step and is industrially useful.
Publication of Application and of the State of the Art Report
Both the patent application, the specification pamphlet, along with the search report on patentability drawn up by the Office, will be published in the Official IP Bulletin after 18 months from the date of filing (or its priority), and this information will be disclosed to the public.
Third Party Observations
From the publication of the patent application and until the completion of the substantive examination, any person can submit observations on the patentability of the invention which do not interrupt the processing of the application. These will be notified to the applicant so he may file his own allegations in reply.
Request of Substantive Examination
The applicant shall request the substantive examination (binding action) and pay the corresponding fee within three months from the publication of the State of the Art Report, if it was not previously requested at the same time as the application. Until the end of this period, the modified claims may be submitted, in order to obviate any possible objections of lack of novelty and inventive step that can be deduced from the IET and the written opinion, considering that the amendments cannot include new matter that extends the content of the application or refer to elements that have not been subject of the conducted search.
Substantive Examination and Resolution
If as a result of the examination, the requested patent does not incur the lack of any requirement, it will be granted. However, in the event of any reasons preventing its total or partial grant, these will be notified to the applicant to answer the objections or modify the claims within two months. If the Office considers there are persisting causes that prevent its grant in whole or in part, these will be notified to the applicant and provide a new period of two months to amend the application or submit his own allegations. And finally, the Office will resolve on the grant or denial of the patent. If no action is performed by the applicant to avoid the objections, the patent will be denied. In the case of favorable decision, the mention of grant of the patent will be published in the Official IP Bulletin and the patent specification pamphlet will be issued as it was granted.
Within six months from the publication of the grant, any person may oppose the granted patent. The grounds for opposition may be based on the fact that the claimed invention does not meet any of the requirements of patentability, lack of clarity, or that the granted patent exceeds the content of the application as it was filed. Once the opposition has been admitted for processing, the patent holder may submit his allegations in reply and modify the claims within three months. The OEPM will forward the allegations and proposed amendments submitted by the owner to each party, providing each a two-month-reply period. Finally, the Office will resolve by fully or partially accepting the opposition filed, or dismissing the same if it does not concur with any reason for opposition. If after the owner has submitted the modifications or allegations, any deficiencies persist that might prevent the Office to grant the patent entirely or in part, a new one-month term will be provided to correct the deficiencies, or to submit new claims, before taking a final decision about the opposition. The Office may decide whether to revoke the patent, maintain firm its grant or grant the modified version.
To keep the patent in force, after its grant, the annual fees from the 3rd year up to the 20th last annuity must be paid one year in advance during the term of the patent. The valid deadline on which the annual fees are due shall be the last day of the month in which the application was filed plus the subsequent three months.
Utility Model Grant Procedure
Although it has some common stages, the procedure will differ from that to patents, being much shorter as it takes approximately 8 months from the filing date for straightforward cases and up to 14 months for an opposed or objected Utility Model until a decision is taken. The main differences are that the applicant of a Utility Model does not have to request neither the State of the Art Report nor the binding substantive examination. In exchange, the Utility Model application will only be published in the Official IP Bulletin, opening a four-month-period so anyone can file an opposition and challenge it on the basis of its patentability requirements for UMs. The maximum duration of a UM is of 10 years. After it is granted, the annual fees must be paid one year in advance during its term from the 3rd year up to the 10th last annuity, to maintain this right. It should be noted that the grant of a utility model shall be without prejudice to third parties and with no guarantee by the State as to its validity or the utility of the object to which it refers, implying that any further dispute on its validity or patentability may be brought, at instance of the stakeholder, to the relevant Commercial Court. – Maintenance. The valid time limits for the payment of annual fees, from the 3rd year up to the 10th last annuity would be the same as for patents.
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.
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.
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.