By Javier Serrano Irurzun, Bamboo.legal
Patents are essential tools for protecting intellectual property, fostering innovation, and securing exclusive rights over new inventions. If you have developed a novel product or process, you might want to register a patent in Spain to protect your creation from unauthorized use. This article will provide a comprehensive overview of the patent registration process in Spain, detailing what can be patented, reasons for application refusal, the registration steps, required documents, the opposition process, associated costs, and the benefits of filing a patent in Spain.
Contents
1. What Can Be Registered as a Patent in Spain?
2. Reasons for Refusal of a Patent Application in Spain
3. The Patent Registration Process in Spain
4. Documents Required for Patent Registration in Spain
5. Patent Opposition Process in Spain
7. Why File a Patent in Spain?
1. What Can Be Registered as a Patent in Spain?
In Spain, patents are granted for inventions that are new, involve an inventive step, and are susceptible to industrial application. This includes products, processes, machines, and new uses of existing products or processes.
Novelty: To qualify as new, the invention must not be part of the state of the art, which encompasses everything made available to the public (by a written or oral description, by use or by any other means) before the filing date of the patent application, anywhere in the world.
Inventive Step: An invention involves an inventive step if it is not obvious to a person skilled in the relevant technical field. It must demonstrate a sufficient level of innovation beyond what is currently known.
Industrial Application: The invention must be capable of being made or used in some kind of industry, which includes agriculture.
These requirements are cumulative. This means, for instance, that an invention can be new (if what is claimed by the applicant is not exactly part of the state of the art because there is no proper disclosure of such specific claim/s) but lack of inventive step (if, notwithstanding the novelty of the invention, the examiner considers that the person skilled in the art will consider such invention obvious in view of prior art). In such cases, the invention is still not patentable.
It is also important to note that anything made available to the public before the date of filing of the new patent application is considered state of the art regardless if it was or has been patented or not. In other words, not just patent literature is relevant for assessing the novelty and inventive step of a new patent application.
2. Reasons for Refusal of a Patent Application in Spain
Several factors can lead to the refusal of a patent application in Spain:
Lack of Novelty: If the invention is already known or forms part of the prior art, the application will be refused due to lack of novelty.
Obviousness: If the invention does not involve an inventive step and is considered obvious to someone skilled in the art, the application will be rejected.
Non-Patentable Subject Matter: Certain subjects cannot be patented in Spain, including scientific theories, mathematical methods, business methods, and software as such. Additionally, methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body, are not patentable.
Insufficient Disclosure: The application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. If the description is insufficient, the application will be rejected.
Non-compliance with formal requirements: for instance, not providing to the Spanish Patent and Trademark Office (OEPM) a description of the invention or not providing the complete details of the applicant.
Refusal can be total or partial, as a reason for refusal can sometimes affect to some of the claims but not to others. For instance, a specific feature of the invention can be anticipated by already-disclosed prior art, but maybe not the full invention as a whole.
3. The Patent Registration Process in Spain
Filing the Application
The patent application must be filed before the OEPM. It can be filed electronically or on paper. The application must include the description of the invention, claims, drawings (if necessary), an abstract, and the required fees. Also check how to register a trademark in Spain.
Formal Examination
The OEPM conducts a formal examination to ensure the application complies with formal requirements. This includes verifying that all required documents are included and that the fees have been paid.
International search report (IET)
The OEPM conducts an international search of the state of the art on patent and non-patent literature and performs an international search report named IET along with a written opinion on patentability. In the IET, the OEPM provides an opinion on whether the invention is new, has inventive step and has industrial application. The OEPM also indicates whether the description is not sufficiently clear and whether the invention lacks unity of invention (if it does not relate to one invention only or to a group of inventions which must be so linked as to form a single general inventive concept).
Publication
If the application meets the formal requirements, it will be published in the Official Bulletin of Industrial Property (BOPI) at least 18 months after the filing date. The publication includes the description, claims, and any drawings.
The applicant has the option of submitting observations in response to the IET within a deadline of 3 months from publication. The applicant also needs to request substantive examination within such a deadline and pay the examination fees, in the event it had not been requested and paid when the patent was filed.
After publication, a substantive examination is conducted to assess whether the invention meets the criteria of novelty, inventive step, and industrial application, in view of the written opinion given by the OEPM in the IET.
Grant or Refusal
If the substantive examination is favorable, the patent is granted. There is no grant fee.
If the examination reveals deficiencies despite the applicant’s observations to the IET, the applicant is given subsequent opportunities to respond and amend the application. Several iterations with the examiner in this stage are quite frequent. If the deficiencies are not resolved, the application will be refused.
4. Documents Required for Patent Registration in Spain
To register a patent in Spain, the following documents are required:
Application Form: The application form, available from the OEPM, must be completed with details of the applicant, inventor(s), and the invention. Although paper form is still possible, it is not frequent. Applications are normally filed online.
Description: Usually, the description includes an explanation on the field of the invention, known state of the art, a brief description of the invention, a brief description of the drawings, an explanation on the numeric references used in the drawings, and a detailed description of the invention.
Claims: The claims define the scope of the patent protection sought. They must be clear and concise.
Drawings: If necessary, drawings should be included to illustrate the invention.
Abstract: A brief summary of the invention, providing an overview of its technical aspects.
Power of Attorney: If the application is filed through a representative, a power of attorney must be included.
Regarding priority claim, it is normally sufficient to provide reference to the number of the prior patent claimed, country of filing and priority date. Only in the event that the OEPM considers that the priority claim is relevant for assessing the patentability of the invention, it will request the applicant to submit, within a deadline of 2 months, a certified copy of the priority patent issued by the office of origin, along with a Spanish translation if the original document was in a different language.
5. Patent Opposition Process in Spain
After a patent is granted, it can be opposed by third parties who believe that the patent should not have been granted. The opposition must be filed within 6 months from the publication of the grant. The grounds for opposition include lack of novelty, lack of inventive step, and insufficient disclosure. The OEPM will review the opposition, decide on the formal admissibility, and provide the owner of the patent a deadline of 3 months for filing a response. In case a response was filed, the OEPM will provide the opponent another deadline of 2 months to reply. The OEPM will then decide whether to maintain or revoke (totally or partially) the patent.
6. Patent Costs in Spain
The cost of registering a patent in Spain includes various fees:
| Professional fee for filing | €285 |
| Government fee for filing | €87,03 |
| Government fee for requesting IET | €593,65 |
| Professional fee for requesting examination | €100 |
| Government fee for examination | €337,96 |
| Government fee for each priority claim | €17,55 |
The patent registration cost in Spain via the iPNOTE platform starts from as low as $1,055, which includes all government fees and document preparation. Find the best IP attorney in Spain on iPNOTE.
7. Why File a Patent in Spain?
Filing a patent in Spain offers several advantages:
Market Protection
A patent provides exclusive rights to exploit the invention in Spain, preventing others from making, using, or selling the patented invention without authorization.
Revenue Opportunities
Patents can be licensed or sold, creating additional revenue streams.
Competitive Advantage
A patent can provide a competitive edge by protecting innovative products and processes from competitors.
Legal Protection
Patents offer legal protection and recourse in case of infringement, allowing patent holders to enforce their rights.
Incentives and Funding
Spain offers various incentives and funding opportunities for research and development activities, which can be leveraged by patent holders.
Spain as an important part of the EU
Spain’s gross domestic product represents 8.3% of the EU’s gross domestic product. It is a market within the EU to consider. Spain can be also considered as the European gate from and to LATAM, due to the language.
Relatively low fees
Government fees in Spain are not high. A patent can be granted paying just about €1.000,00 on government fees. There are also reductions on government fees to SMEs, entrepreneurs and universities.
Yearly renewals are not expensive either.
Usually, there are subsidies and grants for patent applicants in Spain, as well as other countries in the EU, like the SME Fund offered yearly by the EUIPO. Government fees can be significantly decreased sometimes.
Spain has not ratified the Agreement on the Unified Patent Court
Spain is not part of the unitary patent system. This means that, after a European patent is granted before the EPO, a request of unitary effect will not comprise Spain and a separate validation in Spain is needed. Direct filing before the OEPM is an option to consider.
8. Conclusion
Registering a patent in Spain is a strategic step to protect and commercialize your inventions. The process involves several stages, including filing, examination, and publication, along with the possibility of opposition from third parties. Understanding the requirements, costs, and benefits of patent registration in Spain is crucial for inventors and businesses looking to safeguard their intellectual property and capitalize on their innovations. By securing a patent in Spain, inventors can gain exclusive rights, enhance their market position, and drive growth through innovation.
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