Patent Protection (Inventions)
A patent is a legal title for inventions, that grants a monopoly right of exploitation to the patent holder in a particular country, for a set period of time; generally limited to 20 years from its filing date, to prevent others from exploiting; making, using, offering, selling or importing the invention for commercial purposes without the owners’ authorization and consent. In exchange, the holder must publicly disclose the invention. A patent is the most effective protection against infringement and unfair competition since a successful patented invention will inevitably attract other competitors.
A patentable invention must always be a technical solution to a given technical problem where the new and advantageous effects of the invention are to be sufficiently described in a way that a skilled person in the field is able to replicate the invention. Patentable inventions can consist of processes and methods, machines and apparatus, articles of manufacture, compositions of matter products, or any improvement of these, which must be new (novelty), involve an inventive step (non-obviousness) and be industrially applicable (useful).
Invention patents are territorial and they must be protected on a country-by-country basis. They are always granted either by national patent Offices like the Spanish Patent Office OEPM, the USPTO, the JPO and so, or by regional Offices, such as the European EPO, the Eurasian EAPO, the Middle East GCC or the African OAPI and ARIPO. Depending on the nature of your invention, the scope and budget, you will need to choose where in the world would you or your company like to protect your patent as the first application (priority) and apply for further extensions abroad, in view of the countries where you intend to exploit, manufacture or market your invention.
These are the different routes to patent protection.
- Spanish patent application at OEPM to the whole territory of Spain.
- International patent application at WIPO, under the Patent Cooperation Treaty (PCT) to 150 countries and regional Offices worldwide.
- European patent application at EPO, under the European Patent Convention (EPC) to 38 countries in Europe and extension states.
- Other regional patent Offices: Eurasian EAPO, African OAPI and ARIPO, and Arab GCC.
- Foreign national patent applications to individual national patent Offices.
How Abecsa Can Help You. We can advise you if you are deciding on a valuable patent protection strategy and planning, if you want to license your patent to allow the invention to be exploited by others over a set period of time, or if your invention is being infringed by others and you want to take effective enforcement action in the Mercantile Courts. 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 achieve the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your patent rights in the future.
Full Assistance. 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) or a European Patent (EPO) and later, if you would like to file in multiple countries through the Patent Cooperation Treaty PCT (WIPO) for International Patent application or we can coordinate through our local associates the filing via National Patent applications directly in the countries of your choice. Our fees for patent filings and prosecution are fixed for each stage in each national or regional Office of our jurisdictions so you can foresee the estimated costs for your patent protection project.
Search Services. 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, and incurred significant promotional costs, as well as evading your potential legal liability in exploiting by mistake a very close technology to someone else’s patent 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 on the following questions:
- Where to Protect Your First Patent. We would plan which would be the best Office to file your first patent application (priority), and advice you on the available routes to take for patent filing; National, European, 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 the novelty of your invention, being this the most important element of the patent draft, to be carefully considered and for which patent protection is sought.
- When to Apply. Commonly, it should be filed as soon as possible, ensuring you are the first-to-file the invention patent.
- Who. 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 each Office, 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.
Defense – Office Actions. If your patent is objected by the Spanish or European Office based on formal requirements, on patentability provisions or if it is opposed by a third party, we may study the grounds of the objection or the relevance of the earlier right on which the opposition has been founded and file either the amendment or filing the response to an Office action 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.
Litigation. In enforcement, we can represent and assist either the claimant or the defendant in patent rights infringement proceedings with the Spanish and European Courts.
Watching services. 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 whenever needed.
Main points of Patent Protection
First to file system. Spanish, International and European patents are protected on a first-to-file basis.
Other Type of Inventions. Utility Models. Simple technical innovations and apparatus which might not qualify for a patent can be protected as Utility Models in some countries like in Spain because the invention is not completely new (only local novelty and a minor inventive step are required for a Spanish UM). In some other countries, this kind of inventions is called “petty patents” or “small patents”. Their validity is of 10 years from the date of application.
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. An exception is made on supplementary protection certificates (SPC) requests for drugs, medicinal products and phytosanitary goods, where requests may be granted for an additional 5-year-term after the expiration of its 20-year-period.
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, confirming the protection of the invention and act as a warning to any infringers and unfair competitors seeking to copy or imitate your technology.
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 IP agent). Agents 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 future patent. However, some inventors decide not to protect while it is exploited and just keep it secret, but it is important to know that if someone likely devises your invention or is able to reach the same result as your invention but using a different method, without any misappropriation of information, then trade secrets will offer no protection, like patent protection does confer.
- 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 only a simple Google search to know if the product exists or not, as this would not be enough). 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 and just include what is really patentable.
- 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. Occasionally, 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.
- Patent Promotion. 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 by approaching 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.
Please do contact us via our contact form if you need advice on any patent issues such as:
- Protecting your patent in Spain, with the European Patent Office or in multiple countries.
- 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, European patent, from oppositions or appeals.
- Revising and/or amending your patent draft by our engineer.
- Opposing a Spanish patent or utility model or a European patent filed by others.
- Taking legal action against another person or company who is selling or commercializing your invention in Spain or in Europe without your consent.
- Translating your patent specification into Spanish, English or to a required local language.
- Renewing your patent annually.
- Licensing the use of the invention or selling your patent ensuring the assignment to other person or company.
- Protecting your know-how and trade secrets.
If this will be the first filing of your invention, it is important that you do not disclose the technical characteristics of your invention to others before you apply for patent protection, as a previous disclosure may mean that you cannot patent it, or your patent may be declared invalid by anyone who proves this preceding disclosure (on the basis of 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, warranting the professional secret and using it strictly for the purpose or needed service we are instructed to handle in your name.