On August 29, the Spanish government passed Royal Decree 1431/2008 modifying certain implementing regulations in IP matters. This Royal Decree introduces no amendments on substantive law but clarifies and improves the procedure for the registration and granting of IP rights.
First, the Royal Decree suppresses section 29.4 of the Regulation for the implementation of the Spanish trade mark law whereby an applicant acting on his own behalf and without a domicile or registered address in Spain was obliged to designate a domicile in Spain for notification purposes. This provision had been considered incompatible with article 49 of the European Union Treaty by the European Commission and contrary to the free movement of services within the territory of the European Union.
According to the new draft of article 24.9, notifications may be served upon any Spanish domicile designated, to an email address or by any other technical communication means made available by the Spanish Patent and Trade Mark Office (such as fax).
This provision is applicable to all types of IP rights and amendments have been introduced to all relevant regulations.
Another significant innovation resulting from the Royal Decree is the introduction in Spain of a preliminary written opinion regarding the compliance of the invention with the patentability requirements. This non-binding opinion will be included in the state of the art report and will provide the applicant with relevant feedback on the chances of success of the patent application allowing the applicant to assess whether to continue with the registration procedure, modify or withdraw the application.
The new opinion will not result in an increase in the application costs and is expected to make the patent-granting procedure more dynamic as well as putting Spain in line with other jurisdictions and international organisations that have already implemented this measure such as the European Patent Office.
Moreover, as a result of the Royal Decree, online applicants will be able to submit a power of attorney or authorization in an electronic format by providing an electronic file containing an unabridged copy of the power of attorney. Before this amendment, online applicants were obliged to submit the document containing the power of attorney at a later stage which entailed an unnecessary burden for both particulars and professionals.
The last significant modification resulting from the Royal Decree refers to the obligation to submit a translation into Spanish of any modifications to the patent after its grant resulting from an opposition procedure or a limitation imposed by the European Patent Office in order for the patent to have effect in Spain. This translation will have to be filed within the three-month term that is granted for the filing of the initial translation.
Royal Decree 1431/2008 was published in the Official Spanish Gazette Bulletin on Monday 15 September, and entered into force on September 16. Any grant procedure for IP rights filed before that date will be governed by the previous regulations. However, the amendments regarding the preliminary written opinion included in the sate of the art report are applicable as of September 16.
Overall, these amendments and other minor changes have the sole purpose of clarifying, sharpening and facilitating the granting procedures for the different types of IP right and making the functioning of the Spanish Patent and Trade Mark Office more dynamic and efficient. We sincerely hope this goal will be achieved with time.
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| Maria Vilas |
Herrero & Asociados
Alcala, 35
28014 Madrid
Spain
Tel: +91 522 74 20
Fax: +91 522 62 49
info@herreroasociados.es
www.herreroasociados.es
