Comprehensive patent consulting

A patent is a certificate granted by a State that recognizes the owner's right to prevent, within the territory of said State and during a specific period of time, third parties from manufacturing, selling, using, importing, exporting or marketing the patented invention without the owner's consent.

The drawback of this monopoly based on temporary exclusion is that the patent owner must allow the detailed description of the invention to be disclosed and made publicly available, such that anyone can freely use it once the patent has expired.

A patent may protect a novel and inventive method, apparatus, product and/or use, or the refinement or improvement thereof. It is important to highlight that, in any case, the right granted by a patent is "negative". That is to say, it is a right to "exclude" others, rather than to "include" the owner. The granting of a patent does not authorize the owner to use or apply an invention, but rather only gives them the right to prevent third parties from using it.

As a general rule, the maximum term of a patent is 20 years from the application date, and is subject to annuity payments. In some countries there are utility models in addition to patents. In Spain these have a maximum term of 10 years. To protect the appearance of a product there is industrial design protection, which in Spain has a maximum term of 25 years, through consecutive five-year renewal periods.

Processing patents may vary from country to country. Aspects relating to the application, granting or renewal, or issues such as whether or not there is a patentability examination before granting, depend on the specific legislation of each country or region.

However, there are several common characteristics due to international efforts towards greater harmonization. Generally, processing a patent consists of a stage where an application is filed before the relevant state institution. This is followed by other stages, once an examination regarding formal issues is carried out, in which a background search, patentability examination, granting and renewal of rights are carried out. At some point in the processing, there will also be at least one stage where third parties may file observations and/or oppose the granting of the patent, as well as different possibilities for filing appeals.

In Spain, on April 1^st, 2017 the new Patent Law (Law 24/2015, of July 24^th) entry into force. This new law adapts the legislation to current needs regarding patents and integrates various international treaties and European directives that have been implemented. Among the changes introduced, it is worth mentioning the compulsory substantive examination (the possibility of obtaining patents without examination disappears) or the introduction of a post-grant opposition system, similar to that which exists for European patents (although the period is significantly shorter). Other important changes include the advance payment of the search fee at the time of the request; the possibility of revocation or limitation of the patent, by modifying the claims, at the request of the owner, or in the response of the claim for nullity or counterclaim for nullity; the creation of the figure of preventive writings, in anticipation of possible interpositions of precautionary measures; or various regulatory aspects of legal actions related to infringement, validity or compulsory licenses.

Any private or legal individual may apply for a patent. In turn, this may be transferred, assigned, licensed, etc. to third parties through the appropriate legal channels. UNGRIA's team is at your disposal to advise and help you in establishing the best industrial protection strategy to fit your specific needs. Of course, we will also prepare the complete documentation required, including the technical specification, claims, drawings, figures, etc., as well as manage the entire processing procedure and guide you when necessary to resolve any incidents that may arise.

Protection for inventions outside Spain

To protect an invention in other countries that are members of the Paris Convention and the World Trade Organization, the applicant can exercise the right to priority. After filing a patent application in Spain, the applicant has 12 months to also file it in other countries, maintaining the filing date in Spain (priority date) as the filing date of these subsequent applications.

In addition, there is the possibility of carrying out depository applications in order to file in several countries at the same time. For example, once an application has been filed in Spain, and before the end of the 12 months, an international application can be filed (known as a PCT application), which is equivalent to filing in 150 countries, and maintaining the priority date.

Is everything patentable?

Almost all patent legislation contains exclusions and limitations regarding patentable subject matter and the rights of owners. For example, according to Spanish legislation, and that of other neighboring countries, the following are not patentable:

• Discoveries, scientific theories and mathematical methods.
• Literary and artistic works or any other aesthetic creation, as well as scientific works.
• Plans, rules, and methods for the pursuit of intellectual activities, playing games, or economic and business activities, as well as computer programs.
• Ways of presenting information
• Inventions whose publication or exploitation would be contrary to public order or morality.

There are additional exclusions related to life science, in fields such as medicine, biology or agriculture. Among them are:

• Plant and animal varieties. However, inventions where the subject matter is plants or animals are patentable if the technical feasibility of the invention is not confined to a particular plant variety or animal breed.
• Essentially biological methods for the production of plants and animals. To this end, methods that are considered "essentially biological" are those that consist entirely of natural phenomena such as crossbreeding or selection.
• The human body, in the different stages of its formation and development, as well as the simple discovery of one of its elements.
• Surgical or therapeutic treatment procedures applicable to the human body or to the bodies of animals, or diagnostic procedures which are carried out on the human body or the bodies of animals. However, products are patentable, in particular substances or compositions, as well as inventions of apparatuses or instruments for the implementation of such procedures.
• Methods for cloning human beings.
• Methods for modifying the germline genetic identity of human beings.
• The use of human embryos for industrial or commercial purposes.
• Methods for modifying the genetic identity of animals which are likely to cause them suffering, without any substantial medical benefit, or animals resulting from such processes.

With regards to utility models, the entry into force of the new Patent Law (Law 24/2015, of July 24^th) the possibilities of protection have been extended to also include (i) chemical products, substances or compositions, (ii) the novelty requirement has been raised (which now must be absolute) and (iii) the completion of the state of the art report before carrying out any action or claim is required. The exclusion is upheld for method inventions, food and inventions with biological subject matter, as well as for pharmaceutical substances and compositions (these being understood as those intended for use as medicine for humans or animals).

Patent Maintenance

Owners must pay annual maintenance fees at the time of patent application prosecution, as well as to maintain it in force once granted. These annual fees progressively increase up to the amount corresponding to the twentieth year.