Spain: The utility model alternative

June 22 2016

A utility model can be obtained in Spain for inventions relating to products, not methods, and for a term of 10 years.

The requirements to be met by a utility model in Spain are slightly different to the requirements to be met by a patent. Both rights require that the subject matter of the invention must be new and must involve an inventive step, but the meaning of inventive step is different for patents and utility models.

In the case of patents, an invention involves inventive step when it does not derive in an evident way from the state of the art, while in the case of utility models an invention involves inventive step when it does not derive in a very evident way from the state of the art.

This distinction between evident and very evident implies that if the invention incorporates a small improvement, not too inventive, it would be advisable to file a utility model application. This means that we can obtain stronger protection in Spain for a small improvement by filing a utility model, instead of filing a patent application.

Furthermore a utility model application does not require a search report nor an examination on patentability of the invention, unlike a patent application. This implies that there is no need to pay a search fee nor an examination fee. The invention is only examined on patentability requirements if an opposition is filed by a third party.

The new Spanish Patent Act that will come into force in 2017 includes some changes concerning enforceability of utility models. The main novelty with respect to the current law is that a search report must be requested to the Spanish Patent Office only if the owner of the utility model wishes to enforce his or her rights against a third party.

We might also say that the prosecution of a utility model application is quicker than the prosecution of a patent application. It only takes less than one month to be published and only five months to be granted if no opposition is filed. The prosecution is therefore quicker than the prosecution of a patent application which takes more than three years.

To sum up, we should say that if you need to protect a product invention in Spain in a quick, easy and cheap manner, we recommend you to proceed with a utility model application.