The patent process is a structured way to protect and promote innovations and technological development. From the filing of the application to the Grant, innovators must carefully examine the requirements and processes established by the competent official bodies.
Join us to learn about the basic principles that make up the patent process. We will help you understand its essence, how it works, the different types of patents that exist and how to apply for them.
Basic principles for understanding patent procedure
In essence, a patent grants an exclusive right to an invention, whether it is a product or a process. This right is granted to those who file an application and go through the entire patent procedure, which publicly discloses technical information about inventions. In this way, the patent holder has the power to authorise or license third parties under agreed conditions, and even to assign the right to the invention to a third party. When the patent expires, the invention enters the public domain, allowing it to be commercially exploited without infringing the patent.
In addition to patents, there is the utility model, aimed at protecting inventions of a lower inventive rank. These models, commonly applied to improvements on already known devices, are particularly suitable for small and medium-sized enterprises seeking to make ‘minor’ improvements to existing products.
How does the patent system work and types of patents?
The patent system operates through national or regional offices that grant these exclusive rights. In Spain, three types of patents can be registered, according to the territorial scope they cover:
- Firstly, we have the OEPM patents, registered at the Spanish Patent and Trademark Office, valid only at national level.
- There are also EPO patents, approved by the European Patent Office, valid in the countries that subscribe to the European Patent Convention. That is, 39 states (including the 27 EU member states), one extension state and four validation states.
- Finally, there are the PCT patents, governed by the Patent Cooperation Treaty and applicable in the 157 countries that subscribe to it. This patent procedure is managed through the World Intellectual Property Organisation ( WIPO ).
Incidentally, it is essential to understand that there is no universal patent Grant system; it is not possible to obtain a universal ‘world patent’ or ‘international patent’.
Equally, a patent holder can strengthen his patent protection by applying for patent additions. For all intents and purposes, protection for these improvements
Duration of patents and utility models
A crucial aspect of the patent procedure is its duration. Patents have a duration of 20 years from the date of filing, while utility models are protected for ten years. After this period, the invention enters the public domain, available for use by anyone.
A relevant nuance is the possibility of applying for a Supplementary Protection Certificate (SPC) for patents for pharmaceutical and phytosanitary products. Specifically, this certificate extends protection up to a maximum of five years after the expiry of the patent, thus contributing to the continued protection of critical innovations in these sectors.
Patent procedure in Spain
In short, the patent procedure in Spain begins with the filing of the application at the Spanish Patent and Trademark Office (SPTO). Based on this, we must follow the fundamental requirements and steps set out in Law 24/2015 on Patents. This procedure can be carried out in person, through a representative or an intellectual property agent. But there is also the option of filing it at the registers of any state or regional administrative body, as well as at post offices. Furthermore, it is possible to file electronic applications through the SPTO’s virtual headquarters, for which an electronic certificate is required. This method speeds up the process and contributes to its efficiency.
As we will explain below, it is possible to choose between the General Grant Procedure and the Procedure with Prior Examination.
The time lag between the filing of the application and the grant of the patent generally ranges from 26 to 36 months. However, opting for the accelerated grant procedure can significantly reduce this period, allowing the patent to be granted in approximately 12 months.
Patent procedure requirements
Before starting the process, it is essential to carry out a search in the databases created by the SPTO to identify documents describing similar inventions. This provides an insight into the novelty of the invention. Moreover, several essential requirements must be taken into account:
- Exclusion of prohibitions. The invention must not be included in the prohibitions established by the Patent Act.
- Patentability criteria. The invention must be new, possess inventive step and have industrial application.
- Patentable objects. In this sense, a process, a method of manufacture, a machine or apparatus, or a product may be the subject of a patent. Utility models, on the other hand, can protect utensils, instruments, tools, apparatus, devices or parts thereof.
- Exclusions from protection. Some elements, such as discoveries, scientific theories, mathematical methods, literary works, and more, cannot be protected by patents or utility models.
Content of the application
A patent application in Spain must include several essential elements:
- Application form: To fill it in, we suggest you consult the guide provided by the SPTO.
- Description of the invention: A clear and complete explanation so that a person skilled in the art can carry out the invention.
- Claims: Define the subject matter of the invention and what protection is sought for.
- Illustrations or drawings: Mandatory for utility models.
- Abstract: Compulsory for patents, it provides brief information about the invention. Not compulsory for utility models.
Application fees and other costs
Obtaining a patent entails certain costs, one of the main components being the fees payable to the SPTO . In this respect, the fees vary between €792.88 (general procedure) and €1,186.55 (preliminary examination). In the case of utility models, the application fee is around €100. These fees do not depend on the technical field or the complexity of the invention.
By the way, filing the application electronically gives a 15% discount on the filing fee. Apart from this, we must also consider the costs associated with the preparation of the necessary documentation for the application. To maintain these rights, annual maintenance fees must also be paid, which are progressively increased and updated every year by the General State Budget Law. These fees are detailed and updated on the SPTO website.
How does the patent procedure work?
Once the application has been filed and the examination processes have been completed, the SPTO issues a Prior Art Report (PAR) to the examiner. This report highlights documents related to the application and provides an opinion on the novelty and inventive step of the invention. Depending on the procedure chosen, the Grant can be made even if the STI is unfavourable, in the case of the General procedure.
On the other hand, if the Prior Examination procedure is chosen, the SPTO carries out a more in-depth examination, assessing the novelty, inventive step, industrial application and sufficiency of the description. The patent may be granted or refused in whole or in part at this stage.
Likewise, the SPTO has also implemented an accelerated grant procedure, significantly reducing deadlines if certain requirements are met, such as the waiver of priority and the non-extension of legally established deadlines.
ISERN accompanies you throughout the patent application process.
A century of experience in the registration and protection of patents, trademarks, intellectual and industrial property in Spain and throughout Europe endorse our leadership. At ISERN Patents and Trademarks we provide you with legal advice and support from professionals with proven expertise, before, during and after the patent procedure, whether for your personal invention or for your company. And once your patents have been granted, we watch out for any misuse of them by third parties and defend your rights over them. Contact us and visit us at any of our twelve offices in the most important cities in Spain!