- Royal Decree 316/2017, published on 1 April, approves the regulation of the 2015 Patents Act and applies from that day.
- It introduces post-grant opposition and revocation or limitation procedures, with a prior substantive examination.
- For innovators, it pays to review the protection strategy and the deadlines before filing a patent or a utility model.
On 1 April 2017 the State Gazette published Royal Decree 316/2017 of 31 March, approving the Regulation implementing Law 24/2015 of 24 July on Patents. The regulation took effect that same day, as the new law, which replaces the 1986 one, began to apply. It has 115 articles, eleven titles and an annex with the formal requirements for applications. Industrial property attorneys must file electronically under the regulation.
In the words of its own preamble, the new rules seek a system for granting “strong patents”: titles that pass a prior examination of novelty and inventive step before being granted and that, once granted, enjoy greater legal certainty. For companies that innovate, and for start-ups that depend on their industrial property, it is a change of rules that affects costs, timing and strategy.
How the new procedure works
The application is published after eighteen months and third parties may submit observations. The procedure includes the search report, the written opinion, the substantive examination and the grant. It is a more demanding route than the previous one, which had less rigorous alternatives, and its purpose is for what is granted to be sounder.
The regulation also covers divisional patents, change of type of protection and the confidential handling of patents of interest to national defence. It also sets the procedure for supplementary protection certificates for medicines and plant protection products and keeps utility models, a faster form of protection for inventions with a lower inventive level. The specific fees are set in another rule, and the regulation provides for a reduction and a benefit for public universities.
Opposition and revocation
Among the novelties is post-grant opposition: during the six months after publication of the grant, a third party may oppose the patent remaining in force. It is a new procedure in Spain, inspired in part by European Patent Convention practice, which moves into the administrative stage a debate that could previously be raised only before the courts.
The revocation and limitation of a granted patent, at the holder’s request, are also regulated. This allows the scope of a patent to be adjusted when relevant prior art is discovered, without losing protection entirely. For anyone competing in a market, it means others’ patents can be challenged earlier and by a simpler route, and one’s own must be better prepared. Greater transparency also eases agreements, licences and assignments, because the buyer knows better how solid what it acquires is.
What to review
Companies with patents or pending applications can check with their industrial property attorney which regime applies to them and which deadlines are running. For new ones, it helps to decide whether a patent, a utility model or a trade secret is the best way to protect each innovation, and to estimate costs and timing realistically.
Those who watch competitors or fear industrial property conflicts should follow the publications of the Spanish Patent and Trademark Office, because post-grant opposition has short deadlines. A good industrial property strategy is built before launching the product, not after someone copies it.
With new rules, protecting an innovation well starts with choosing the right route and keeping to the deadlines.
This article is general information. It is not legal, tax or investment advice, and it does not take anyone’s particular circumstances into account.
