3Protection of inventions in Spain

Inventions may be protected in Spanish law through patents and utility models.

3.1 What is a patent?

Patents are exclusive rights granted by the State to the inventor in his invention for a specific term (20 years) on the understanding that once this period has expired, the invention will enter the public domain. Thus society benefits from the technical advantage provided by the invention.

3.2 How can you register a patent in Spain?

In addition to filing a patent application at the SPTO, regional registration systems are also available. Such systems allow the applicant to obtain protection for the invention in one or more countries and each country determines whether or not to protect the patent in its territory pursuant to applicable legislation.

The application process before the SPTO can take a minimum of 30 months.

The patent owner may exploit the invention and prevent third parties from exploiting, marketing, or launching it in the market without consent. While the patent is in force, third parties may only exploit the invention if the owner has granted a license.

3.3 What kinds of inventions are patentable?

In order for an invention to be patentable, it must be new, involve inventive step and be capable of industrial application. Consequently, the three main requirements to obtain a patent are as follows:

1. Absolute novelty.
2. Inventive step.
3. Industrial application.

Scientific discoveries or theories, mathematical methods, literary, scientific, artistic works and any other aesthetic creations, rules and methods of performing a mental act, playing a game or doing business are not considered patentable. Neither is it possible to obtain a patent for inventions that are contrary to public policy, plant varieties (which have their own special legislation) animal breeds, essentially biological processes for the production of plants or animals and the human body.

3.4 Are bio-technological inventions patentable in Spain?

The Spanish Patents Law includes the legal protection of bio-technological inventions, although clear restrictions are established based on ethics and public policy.

3.5 Are pharmaceutical products patentable in Spain?

In Spain both product and process patents are admitted and pharmaceutical products have been patentable since 1992.

Indeed, the inclusion of the “Bolar clause” or “Bolar exemption” in the Spanish Patent Law refers precisely to pharmaceutical products. According to this clause performing within certain time periods the necessary studies, tests and trials to obtain authorization for generic drugs does not constitute patent infringement.

Patents are granted for a period of 20 years from the date on which the application is filed. However, a maintenance fee, which is subject to a gradual annual increase, is due yearly.

Once the 20-year period has lapsed, the subject matter of the patent passes into the public domain and may be used by any third party. The Complementary Protection Certificate for pharmaceutical and phytosanitary products, which has been in force since 1998, extends the patent by up to a maximum of five years for the time it took to obtain the relevant administrative authorization, which is essential in order to market such products.

Following the United Kingdom's withdrawal from the European Union, only applications for supplementary protection certificates for plant protection products and medicines (or applications for the extension of such certificates) which were submitted to a UK authority before January 1, 2021, will continue to be governed by European Union law.

3.6 What is a European patent?

Since Spain’s ratification of the European Patent Convention (EPC) in 1973, Spain may be designated with a European patent application. European patents are administered by the European Patent Office, based in Munich. Via a single procedure and applying legislation in common (the European Patent Convention), this system allows the registration of a bundle of national patents enforceable in the countries designated by the applicant.

3.7 What is a unitary patent?

The expected European patent system with unitary effect will, as of 1 June 2023, grant uniform protection and will have the same effects in all Member States participating in the system. This is intended to increase legal certainty and reduce the costs of patent protection, thereby incentivizing investment in R&D and innovation.

Following Germany's ratification on 17 February 2023, the transitional measures set out in the Unified Patent Court Agreement (UPC Agreement) and the Unitary Patent Regulation 1257/2012 have been activated. Thus, as of 1 March 2023, the so-called "sunrise period" has started, which allows patent holders to apply for an "opt-out", avoiding the exclusive jurisdiction of the Unified Patent Court.

A European patent with unitary effect may only be limited, transferred, revoked or lapse in respect of all the participating Member States, but it may be licensed for all or some of those States.

Once the unitary patent system enters into force, European patents with unitary effect can only be limited, transferred, revoked or lapse in respect of all participating Member States. However, it will be possible to license to part of these States, without the need to include all signatories of the Unitary System.

So far, Spain, as well as Poland and Croatia, remain outside the system.

3.8 What is the PCT?

Spain has ratified the Patent Cooperation Treaty (PCT) which unifies the initial filing of applications and the performance of search reports which are necessary to determine the novelty of the invention and the inventive step, with a view to reducing costs and simplifying the grant of a patent. However, as opposed to the European patent, registration is granted by each of the relevant national Offices.

3.9 What is a utility model?

A utility model is a form of protection for inventions which although new and with inventive step, only give the subject matter a configuration, structure, or constitution that results in an advantage, appreciable for its use or manufacture, but with a lower standard of inventiveness.

A lower standard of inventiveness is therefore required for utility models than for patents. They are granted for a non-extendable period of 10 years, and therefore have a shorter term than patents. This system of protection is particularly suitable for protecting tools, objects and devices used for practical purposes. The application process usually takes between 8 and 14 months.