March 31, 2017

Spain: new Patent Law coming into force

On April 1, 2017, the new Spanish Patent Law will enter into force implementing some significant changes in the major issues of patent registration procedure.

Under the new Patent Law, all patent applications are subject to substantive examination. A request should be submitted within three months after the publication of the prior art report. The fee for substantive examination will constitute 389.77 EUR for paper filing and 331.30 EUR for e-filing.

Patent owners will have the opportunity to request revocation or limitation of claims at any time during the patent lifetime. The fee for requesting revocation or limitation will constitute 74.19 EUR for paper filing and 63.06 EUR for e-filing.

The grant fee will be included into the filing fee and, thus, eliminated as it is. The provision will apply only to the applications filed on and after April 1, 2017.

Prior art search will have to be requested and the corresponding fee will have to be paid at the time of filing of a patent application.

Natural persons and small and micro entities will get the possibility to benefit from the reduction of the filing fee, fee for requesting prior art search, substantive examination fee and annual fees for the 3rd, 4th and the 5th years by 50%. An applicant has to provide a request for fee reduction and the corresponding documentation at the time of filing. Said provision will apply to national patents and utility models and European patents validated in Spain.

Post-grant opposition system will be introduced. Any person may file an opposition against patent registration within six months from the publication of the registration on the following grounds: 1. the registered invention does not meet patentability requirements; 2. its description is not clear and comprehensive enough for a specialist in the corresponding field to perform it; 3. the scope of the granted patent exceeds the scope of the application.

Additionally, the new Law introduces a new system of patent annuities payment. Annuities are payable after the patent grant counting from the 3rd year from the filing date. While previously the fee could be paid within three months before or one month after the due date, starting from April 2017 the fees will have to be paid within three months after the due date. Still, the owner will have the option to pay the fees with a 25-% surcharge within a grace period of the following three months and with a 50-% surcharge within three more months after the first grace period.

For more information on patent registration in Spain, please visit our applicant’s guide. We also welcome you to get accurate quotes for IP rights protection in countries of your interest via our quotation system.

Author: Lynda Miller