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Recent developments in Spanish patent law

The patent legal scene in Spain has been focused lately around two subjects: the position of Spain against participating in the Unitary Patent system and the draft of a new Patent Act which is currently being discussed.

On one hand, Spain has declined to take part in the European patent system, that is the European Patent with unitary effect (the Unitary Patent) and the Unified Patent Court (the UPC), created pursuant to Regulation 1257/2012 and Council Regulation (EU) 1260/2012, both dated December17 2012, and also the Unified Patent Court Agreement, dated February 19 2013 (together, the so-called "Unitary Patent Package"). As it is well known, the initial challenges brought by Spain and Italy (matters C-274/11 and C-295/11) against the Council's decision to authorize the enhanced cooperation procedure in the creation of Unitary European patent were dismissed by the Court of Justice on April 16 2013; and, although the outcome of a subsequent challenge by Spain of Regulations 1257/2012 and 1260/2012 (appeals dated March 22 2013, matters C-146/13 and C-147/13) is still pending, the opinion of the Advocate General delivered on November 18 2014 recommends the dismissal of those two latest complaints, and at this stage it seems unlikely that the Court will eventually depart from that opinion.

It may be that, once its challenges on the system are dismissed, Spain decides to change its position and join in the Unitary Patent system. There is a certain view that once the system is up and running Spain cannot permanently remain out of it. However if and when this change of position will occur is at this moment uncertain.

To the extent that Spain is not a party to the Unitary Patent package, for a European patent to take effect in Span it will still require to be translated into Spanish, said translation to be submitted to the Spanish Patent Office and published at the Industrial Property Gazette. Also, the UPC will not have jurisdiction to deal with the Spanish validated European patent (except for those few cases where pursuant to Regulation 1215/2012, as amended, the jurisdiction of a foreign court to deal with the Spanish part of the European patent could also be asserted, such as for adopting provisional measures following the decision of the CJEU in the Solvay case: Solvay SA v. Honeywell Fluorine Products Europe BV, judgment dated July 12 2012 case C 616/10). The fact that a Unitary Patent may coexist with European patents without unitary effect (such as the Spanish validated patent) triggers the possibility that there are simultaneous proceedings on the same patent before different courts (the UPC and, for our purposes, Spanish national courts), raising in those cases the same issues that have come up in the past in the case of coexistence of proceedings before different courts dealing with the same European patent (the latest amendment of Regulation 1215/2012, carried out through Regulation 542/1214, deals with this lis pendens situations). This coexistence of court proceedings between the UPC and Spanish national courts plays against one of the reasons behind the Unitary Patent Package: avoiding contradictory court decisions on the same patent. However the risk of having contradictory decisions between UPC and Spanish courts seems rather low: even if Spain remained out of the Unitary Patent system, the decisions and the case law developed by the UPC, which will be seen as a highly specialized patent court, will most likely be followed by Spanish courts in the patent cases submitted before then. Furthermore, this possible coexistence of UPC and national court proceedings may still be seen by some as offering the parties a broader possibility for forum shopping, and in this respect it has been argued that there may be cases where patentees may wish to test first the strength of their patent in a nationally limited forum rather than before the UPC.

The other area that has drawn the attention of patent practitioners in Spain is the drafting by the Government of a new Patent Act, currently under discussion, which is intended to replace the Patent Act dated March 20 1986. It exceeds the scope of this article to consider in detail the many changes that the new proposed Act would bring into the Spanish patent system. We will just mention some of the most relevant features. In the first place, we must point out the proposal which is included in the draft of the Act to replace the current patent registration process, in which prior examination of the sufficiency of disclosure, novelty and inventive step application is available only if requested and the general prosecution process does not include it, by a new single granting process which includes prior examination by the PTO of whether the application and the invention meet the requirements for patentability. The possibility would still remain for the applicant wishing to protect its invention to obtain Utility Models without prior examination and with lower patentability requirements. The draft of the new Act also improves the regulation of Utility Models and for example it extends their availability to chemical compounds (although pharmaceutical products are still excluded from this type of protection). Another very important change proposed by the Act is the modification of the provisions concerning revocation of patents, in particular the inclusion of the possibility for the patentee to amend the claims of the patent, a requirement of the EPC 2000 Revision which has until now not been implemented into the Patent Act raising doubts both with respect to its availability for national patents as well as on the particular way to implement it in court proceedings (the new Act regulates in detail the rules of procedure which are intended to govern the limitation of claims by patentee). Other changes introduced in the draft of the new Act seek to give explicit legal support to interpretations and clarification of issues which have arisen during all those years out of the current patent Act and which have found their way through the decisions of the courts (for example, the new wording proposed on the Bolar clause).

In general, and although there may be issues in which the regulation proposed in the draft of the new Patent Act should be revisited, the initiative of this new law may in my view be considered as a welcome development and an improvement of the current patent regulation.