On April 1 2017, a new Patent Law entered into force in
Spain. The new Law aims to raise patent quality in Spain and
changes the provisions for patent eligibility, patent
prosecution, patent litigation and even for what constitutes
prior art. Right holders with an interest in Spain are well
advised to take note of these changes and consider adapting
their filing, prosecution and litigation strategies.
Patentable subject matter
Perhaps the most important change in patent eligibility is
that the first medical use of substances or compositions is now
patentable, and so are second medical uses in the form of
purpose-related product claims.
The list of elements and activities that are not considered
inventions (such as computer programs) now specifies that the
provision only applies to the extent that the patent relates
exclusively to one of these elements or activities as such,
bringing the practice into line with that of the European
Patent Office (EPO).
DNA with no indication of a biological function is
explicitly excluded from patentability, and so are surgical or
therapeutic treatment methods and diagnostic methods, which in
the previous law were linked to a lack of industrial
The new law also opens up the possibility to obtain utility
models for chemical products, which was not possible before.
What has not changed is that methods, biological matter and
pharmaceutical products cannot be protected by a utility
The new law prescribes that patent applications concerning
inventions made in Spain must be filed first at the Spanish
Patents and Trade Marks Office (SPTO). Even if the old law
already had a similar provision, it is now more important than
before to abide by the law and applicants having R&D
facilities in Spain may want to take note.
The first filing requirement
In a nutshell: for an invention that was made in Spain, a
PCT application or a European patent application will
have no effects in Spain, unless it is filed at the
SPTO, or claims priority from an earlier application filed at
This applies to PCT applications having an international
filing date on or after April 1 2017 that choose the national
phase route for Spain, and to European applications having a
filing date on or after April 1 2017 that are validated in
Before, it was not uncommon for applicants to file PCT or
European patent applications directly at the EPO for inventions
made in Spain, since the previous law did not tie any specific
consequence to these filings. These applicants may want to
Made in Spain
There is no definition in the new law of what is meant by
realizado en España, which may be translated as
made, done or carried out in Spain: the law does specify that
an invention is deemed to be made in Spain if the
applicant has its domicile, registered office or permanent
address in Spain, but this is merely an assumption.
If the invention is made in Spain, for example
because a foreign applicant has research facilities in Spain
and an invention is developed there, then the first filing
should be made at the SPTO, and the fact that the applicant is
a foreign company merely shifts the initial burden of proof to
a third party challenging the effect of the patent in
What about multiple inventors working in several countries?
Unfortunately (but not surprisingly, taking into account this
issue remains unsolved in most countries with first filing
requirements), the new Spanish law does not specifically
address the situation. Under the new law it is now possible to
request clearance at the SPTO to first file abroad.
What kind of application can be filed at the SPTO, and what
are the formal requirements in each case?
PCT, European and national applications may be filed at the
SPTO under the new law. A PCT application must be filed in
Spanish, and this will be the language of the PCT and the
authentic text for all intents and purposes. The EPO may be
designated as International Searching Authority if desired, but
an English translation is needed in this case.
A European patent application may be filed with the SPTO in
any language, for example in English, and will be forwarded to
the EPO. A translation of the title and abstract into Spanish
must also be filed. A full translation may be requested by the
Office, but this is unlikely at least for inventions that are
clearly not related to national security.
Spanish patent or utility model applications may be filed in
any language, for example in English. A translation into
Spanish has to be provided; however, if the application is only
filed to establish a priority date and is then abandoned, a
decent machine translation would probably be sufficient.
Indeed, a translation does not seem to be necessary for
establishing a date of filing and obtaining a priority right.
However, this is against the spirit of the law, which clearly
intends to allow a national security check.
In case it is not clear from the above summary, let us state
explicitly that it is not possible to file a PCT application at
the SPTO in English.
If you would like to have a PCT application in English for
an invention made in Spain, there are a few options to
consider. We would like to point out that the wording of some
provisions of the new law may give rise to interpretations that
would allow further strategies. However, such interpretations
appear to contravene the spirit of the law, and we would
therefore advise applicants to remain on the safe side.
Here are the main options that we consider safe when you
want to draft in English:
First filing of a European patent
If your current strategy involves using a European
application as first filing, then there is no problem: you
simply file your first application under Article 75(1)(b) EPC
at the SPTO, including a translation of the title and abstract
into Spanish. Unless the invention is deemed of interest to
national security and the application is declared secret by the
SPTO, it will be forwarded to the EPO very quickly, and you can
pick up your usual PCT extension strategy and procedure from
However, if in the past you used a PCT application as the
priority filing, at the EPO or at another foreign office, then
you may need to make some changes. Your best option may be to
first file a European application, and use the priority right
to file a PCT at the EPO, either at the end of the priority
year, or as early as one month from the first filing. When
filing the European patent application, an applicant can make a
strategic choice as to whether or not to pay the official
If you are only interested in the priority right, you may
file the European application without paying official fees, and
let it be deemed withdrawn after filing. The extra cost with
respect to your current strategy of filing a PCT application as
first filing would be quite small. If you then file the PCT
right away, one month after filing the European application,
you should still receive the International Search Report from
the EPO in about six months, under the Early Certainty From
Search scheme of the European Patent Office.
However, for the same cost, you might also benefit from the
possibility of adding developments to the PCT, by filing it at
the end of the priority year. The downside here is that you
will not receive the International Search Report in the
Applicants may also file the European application paying the
official fees: the EPO will provide the European Search Report
in six months, and applicants can file the PCT at the end of
the priority year, adding new subject matter and/or using the
PCT Direct service to amend/defend the claims. The cost of this
option is of course higher, but it may be very good value for
money depending on the circumstances.
As a side note, if a positive opinion from the EPO during
the PCT phase is important to you, this might be the best
strategy: if the first opinion is not what you hoped for, you
have the chance of defending your claims for free with PCT
Direct, instead of paying the rather high fee in International
Preliminary Examination (which will still be available if you
fail in your first attempt at convincing the examiner). You may
also recover at least part of the European search fee.
First filing of a Spanish patent
Another possibility is first filing a national Spanish
application in English, with a translation into Spanish. You
are then free to file the PCT at the receiving office of your
choice, and you get an additional Search Report from the SPTO
in about six months, which can be useful at least as additional
information. The priority document is issued by the SPTO in
It should also be possible to file the application without
paying any fees, just for obtaining a date of filing, but in
the first days of application of the new law this is proving
more complex than it should be. In any case it does not appear
to have any significant advantage over filing a European
application without paying fees.
First filing of a PCT application
You may of course translate your draft into Spanish and
first file a PCT application at the SPTO; you may obtain the
international search from the European Patent Office by filing
also your English text.
However, aside from the cost and delay for translating the
draft, there is another drawback in this strategy: your
authentic PCT text is a translation, and there is no
possibility of correcting translation errors based on your
Do you really want to first file a PCT application outside
of Spain? Well, don't despair: there is a way! All you need to
do is request an authorisation from the SPTO. The procedure is
simple: you file the request, attaching the text you intend to
file abroad and a full translation into Spanish. There is no
official fee involved, and the Office will issue a reply within
The PCT in English may then be the first filing. The
drawback is obvious: once your draft is ready, you will have a
delay of up to one month before you can get your priority
application filed. Logically it should be possible to use an
early draft of the application to file the request, so as to
minimise the delay, but this is not what the law says.
The most significant change in prosecution is that
substantive examination became obligatory for all patent
applications filed on or after April 1 2017. Before the new
law, substantive examination was optional, at the request of
the applicant. Many applicants avoided substantive examination
and obtained granted patents with possibly broad, and often too
broad, scope of protection. Now, all Spanish patent
applications but also PCT applications entering the national
phase in Spain will have to go through examination. If
protection is desired for a PCT application in Spain and one or
more additional countries in Europe, the option of going
through the EPO might be even more attractive than opting for
various national applications, since the automatic grant in
Spain is not available anymore.
Moreover, third parties will have the possibility to file
observations regarding pending patent applications and
examiners can take these observations into account.
Additionally, a new procedure is created to oppose the grant of
a Spanish patent at the SPTO within six months from grant. The
opposition procedure appears to be mirrored to the procedure
before the EPO. Similarly to the EPO, patent proprietors now
have the possibility to limit claims in a procedure at the PTO
after they have been granted.
These changes regarding Spanish patent applications may make
the option of obtaining a utility model more attractive.
Utility models in Spain have a maximum life of 10 years and are
granted without substantive examination.
There is however a significant change in the definition of
prior art when it comes to utility models and now it includes
disclosures anywhere in the world, as was already the case for
patent applications. Before, only national disclosures were
considered to form part of the prior art for utility models,
which in some cases made it very hard for alleged infringers to
have a utility model invalidated. In this sense, the value of
utility models may have decreased a little bit, although they
still have the advantage of requiring a lower level of
Also, when it comes to litigating a utility model, a right
holder must request a prior art search and accompanying written
opinion from the SPTO before bringing charges. It is likely
that the opinion expressed by the examiner in such a search
report will carry significant weight in a lawsuit.
The new Spanish patent law also brings about significant
changes in litigation. First, a small number of specialised
courts to hear IP cases are established. In Barcelona, Madrid
and Valencia, specific commercial courts will have exclusive
jurisdiction for patent, design and trade mark cases.
Concentration of hearings in these courts should lead to
further judicial specialisation.
A further change in the law that should help patent owners
is that the possibility of amending the claims in a lawsuit is
now formally recognised. Moreover, a court can now recognise
partial validity of a claim. These two changes can help patent
owners to enforce their patents against infringers.
The possibility of filing of protective letters before the
courts to reduce the risk of receiving an ex parte
preliminary injunction is now formally laid down in the law.
According to the Law, the protective letters will however be
communicated to the patent proprietor, which may be considered
as a downside. On the other hand, in recent years, the courts
in Barcelona have adopted rapid actuation protocols in order to
quickly institute proceedings in relation with renowned trade
fairs such as the Mobile World Congress. These protocols have
led to preliminary injunctions being handed down even on the
first day of the Mobile World Congress. Protective letters
might therefore be an interesting defence in relation to these
New threats and opportunities
The new Spanish patent law brings about changes in
prosecution and litigation in Spain that represent new threats
and opportunities. It will probably also affect filing
behaviour for inventions made in Spain and applicants have
various possibilities, each with advantages and disadvantages.
Stakeholders are well advised to take note of the significant
||Anna holds an MSc in
mechanical engineering. She has worked in patents since
1990, and is a qualified European patent attorney since
1999. She was one of the founding partners of ZBM Patents
& Trademarks in 2004. The firm has been listed in
tier 1 in the ranking of Managing Intellectual Property
since 2007, and has twice received the Spanish Patent
Prosecution Firm of the Year award.
Her professional experience includes drafting and
prosecuting patent applications worldwide in a wide range
of engineering fields. Her work also involves advising
clients on substantive aspects of the patent system, from
detecting valuable inventions and building an efficient
portfolio to dealing with infringement, freedom to
operate and due diligence. She often acts as a technical
patent expert in validity and infringement proceedings
before the Spanish courts, and has been involved in
several pan-European cases in fields ranging from medical
devices to elevators.
||Yahel is a Spanish
patent and trade mark attorney and has a law degree from
Universidad Católica Andrés Bello, Caracas
(Venezuela) and a homologation to a law degree from the
Universidad de Alicante (Spain). She is a member of the
Barcelona Bar. She has postgraduate qualifications and
specialisation training in intellectual property both in
Venezuela and in Spain, including a postgraduate degree
from the Instituto de Derecho Industrial of the
Universidad de Santiago de Compostela (IDIUS-USC), and a
masters degree in intellectual property and the
information society from ESADE.
She worked as a lawyer and as a consultant in IP matters
for several years both in Venezuela and Barcelona prior
to joining ZBM in 2005. At ZBM, Yahel is the head of both
the international department and the legal department,
coordinating IP filings and prosecution worldwide, as
well as providing legal advice in-house and to clients
including the drafting and analysis of IP contracts.
||Mathieu de Rooij started
his career in patents in 2002 at the European Patent
Office. During five years he worked as an examiner in
diverse technical fields. His tasks involved search and
substantive examination as well as document
classification. He was also involved in the training of
newcomers at the EPO.
While at the EPO, Mathieu passed the European Qualifying
Examination in 2007. In 2008, he moved to Barcelona to
join ZBM Patents & Trademarks. He became a partner of
ZBM in 2011. In the same year, he obtained the he
obtained the European patent litigation certificate,
which will allow him to represent clients before the
Unified Patent Court. His practice focuses on European
patent prosecution including oppositions and appeals, as
well as patentability and freedom-to-operate studies. He
also regularly acts as a technical expert in Spanish