The new Patent Law and the importance of technical advice (III)

The new Patent Law 24/2015, which will enter into force on
1/04/2017, introduces substantial new features in the possibilities - but also
in the requirements - to be able to obtain an invention patent in the future in
Spain.

As already indicated in entries previous to this blog,
the examination of patentability requirements will become mandatory for
all those applications that are presented once the new law and its
implementing regulations have come into force. This implies that the
applicants, and particularly those who were accustomed to following the
general concession procedure and therefore are not accustomed to
respond to communications from the Spanish Patent Office in which
question the patentability requirements of the application, they will find
with new obstacles and difficulties to overcome in the processing of their
requests. Simply to name a few, we can mention the
following:

• First of all, now the examiner will be able to address the applicant indicating
  that the lack of clarity of the claims prevents a search
  of significant prior art.

• As well,
  the applicant must take into account that they may interfere with patentability
  of his invention all those publications of European patent applications
  that designate Spain and have been published in Spanish, and also those
  PCT applications that enter the national phase in Spain, which would have been
  submitted before the priority date of your application but published
  only afterwards. If this occurs, the applicant must know that
  This interference occurs only in relation to the novelty requirement, but
  not that of inventive activity.

• In addition,
  The applicant must also know that, when the invention refers to subject matter
  animal or plant biological, the new Law requires that it must be specified in the
  application its geographical origin or source of origin, although this
  information will not prejudge the validity of the patent.

• As well,
  For many applicants it will probably be of interest to know that the new Law
  Patent Office will now explicitly recognize the patentability of substances or
  compositions “for use as medicines”, a possibility that in Law 11/1986
  currently in force does not exist.

• At
  In the case of Utility Models, an important novelty is that the requirement of
  novelty will go from being relative (new only in Spain) to absolute (at the level
  world). Furthermore, they may be protected as Utility Models not only
  mechanical devices, but also chemical products, substances or compositions,
  although not the pharmaceutical ones.

• And by
  Lastly, the applicant must get used to handling the requirements of
  patentability of an invention (novelty, inventive step and applicability
  industrial) and how they are evaluated in the OEPM, in order to be able to give an answer
  adequate, convincing and that does not give rise to new objections - such as
  of lack of clarity - to a communication from the examiner in which the
  question compliance with such requirements.

But the new Patent Law not only includes changes in
substantive aspects; It also includes changes, and very numerous and substantial ones,
in various aspects of patent prosecution. Again to quote
Only the most relevant ones, we can mention the following:

• With the
  new Law, it will be necessary to pay the fee for preparing the Report on the
  State of the Technique in the same payment period of the filing fee of the
  request.

• At
  period of 3 months from the publication of the Report on the State of the
  Technically, the applicant must request the substantive exam. Yeah
  the examination is not requested within this period, or if such request is revoked, the
  application will be considered abandoned. At the same time as asking for the realization
  of the exam, the applicant will be able to respond to the objections contained in the
  written opinion of the OEPM examiner who accompanied the IET.

• During
  the substantive examination of the application there will no longer be a single possibility of
  overcome defects found by the examiner before Resolution
  Motivated, but the examiner must give the applicant new opportunities
  –pending to be defined in the implementing regulations- to correct the
  request and formulate new allegations. Furthermore, the modifications must be
  accompanied by an explanation indicating the differences introduced and their
  support in the text of the original request. And finally, if they are not answered
  the examiner's requirements, or whether the applicant's attempts at this
  sense are unsuccessful, the application will be denied.

• By
  last: the opposition procedure by third parties against the concession
  of the patent will now be post-grant, within a period of 6 months from the date
  of granting the patent, instead of prior to it as occurs in
  the current Law. In addition, the applicant will have at their disposal new
  administrative procedures for voluntary limitation and revocation
  of your patent, in case they might be of interest to you.

All of the above means that, upon entry into
validity of the new Law, the applicant for an invention patent in Spain will
You will find a totally new panorama, with numerous changes and
modifications both at the substantive level and at the procedural level, which places
highlights the need for maximum technical and professional advice
level to optimize the protection of your Property assets
Industrial with the minimum of difficulties and problems –at least the foreseeable ones-
during the processing of their patent applications.