Spanish Intellectual Property Rights

It is essential to protect the knowledge generated by all public and private organisations in order to take advantage of the benefits it can potentially yield. Such protection, which in English-speaking countries is referred to as “Intellectual Property Rights”, is divided into two types of property rights in Spain:

• Industrial property: the series of exclusive rights that protect innovative activity (new products, processes or designs) and commercial activity by way of exclusively identifying products and services on the market (trademarks and trade names).

• Intellectual property: the series of rights that creators and other owners have over the works and benefits that stem from their creation.

Industrial and intellectual property rights cover a wide range of legal forms, including patents, utility models, industrial designs, new varieties of plants, trademarks, brand names, trade secret, computer programmes and copyright, among others.

Industrial property

PATENTS

A patent is an exclusive right over an invention, that is, a product or procedure that in general provides a new way of doing something or a new technical solution to a problem. In other words, it is a temporary and territorial privilege that bestows upon its holder the power to prevent unauthorised third parties from manufacturing, selling or utilising the protected invention.

The three criteria that must be met for an invention to be eligible for a patent are as follows:

1) Worldwide innovation: an invention is considered new when it is not included in the state of the art. The state of the art includes everything that is available to the public, by any means and in any place, before submission of the patent application.

2) Inventive activity: an invention has inventive activity if an expert in the field does consider it is evidently the result of the technical state-of-the-art.

3) Industrial application: an invention is considered to be applicable to industry when it can be manufactured in any type of industry, including agriculture.

Therefore, new inventions that show evidence of inventive activity and can be applied in industry can be patented. Thus, a procedure, a manufacturing method, a machine or appliance, a product or specific use of the same may all be the object of a patent. The law permits this product to be made of or contain biological matter, and admits the procedures which produce, transform or use this type of substance.

With respect to the patents, it is important to note that:

• The applicant for the patent must describe their invention such that the average expert in the field could implement it.

• Publicising an invention before submitting a patent application cancels out the innovation. It is therefore vital for a researcher not to disseminate by any means an invention that he or she might be interested in patenting, including conferences, specialised publications, the internet, etc. before registering it.

• Discoveries, scientific theories, mathematical methods, literary, scientific or artistic works or any other aesthetic creation, regulations or methods for carrying out intellectual, recreational or economic and marketing activity cannot be patented.

• Methods of surgical of therapeutic treatment of — or methods of diagnosis for — human or animal bodies are not considered to be inventions of possible industrial application and thus cannot be patented. However, patentable products include substances or compositions and inventions of devices or instruments for the implementation of the aforementioned methods.

• Inventions contrary to law and order, varieties of plants (protected by their own special regulations), animal breeds or essentially biological processes intended to obtain plant varieties or animal breeds are not eligible for protection by way of a patent either22.

• Patents in Spain, as is the case in most countries in the world, are awarded for a period of 20 years from the date of application. After this period, the patented object becomes public domain and can be exploited by third parties.

• The principle of territoriality means that protection is only obtained in the countries where the patent is registered. Therefore, registering the patent in a country does not provide automatic protection in other countries. As a result, it is necessary to ensure protection by registering in each one. There are some international procedures which facilitate the protection of an invention in different countries: the European Patent Convention (EPC) or the Patent Cooperation Treaty (PCT).

• The right of priority lays down that, from the date of the first patent application made in a country, the applicant has a period of twelve months to apply for protection in other countries by making subsequent applications in which the priority of the first application shall be cited. Thus all the subsequent applications are taken to be made on the date of the first; in other words, they will have "priority" over applications made by other people for the same invention in the period between the date of the first application and subsequent dates of presentation at the various national offices. The date of the first application is therefore taken to define the pre-existing state of the art when the application is examined. Thus the applicant has a period of twelve months to decide in which countries he/she wishes to apply for protection, and does not have to present all the applications at the same time.

Processing a patent:

Patents must be awarded by a national patent office (the Spanish patents and trademarks –OPEM23 office in Spain), or by a regional office that works for various countries, such as the European Patent Office or EPO. This European system provides protection through a European patent application submitted to one patent office (EPO) only. The application must be submitted in only one language (English, French or German) in the European States where protection is desired, providing they are part of the European Patent Cooperation Treaty (PCT)24. The European Patent Office processes all European patent applications25, which have the same effect as any national patent in each of the States they are awarded for. The international PCT26 establishes a procedure for the international extension of patents. Through this system the protection of an invention can be applied for by presenting a single application to each of the signatory states to the PCT (151 countries according to the World Intellectual Property Organisation27 [WIPO]) chosen by the inventor. The PCT is not a patent concession procedure like the European route, nor does it replace national concessions; it does, however, unify the processing of international protection.

UTILITY MODELS

This type of protection is intended for inventions that, despite being new and the result of inventive activity, consist of endowing an object with configuration, structure or constitution that provides an appreciable practical advantage when it comes to using or manufacturing the object (the key structure is "utility", not the object’s "aesthetics").

They are awarded for a period of 10 years and do not, therefore, provide protection for as long as patents. This system is particularly suited to protecting tools, objects and other devices for practical use.

The new law 24/2015, of 24 July, on Patents28, which comes into effect on 1 April 2017, establishes that any product or composition, including chemical compounds, may be protected as a utility model, although biological products and pharmaceutical compounds are expressly excluded.

INDUSTRIAL DESIGNS

The industrial designs are a specific type of protection for shape creations (on this occasion, the key aspect is "aesthetics"). An industrial design gives the owner exclusive rights over the appearance of all or part of a product, stemming particularly from the features of lines, contours, colours, shape, texture or materials of either the product itself or its decoration. There are two- and three-dimensional industrial designs.

An industrial design provides protection for five years from the date of application and can be renewed for subsequent periods of five years up to a maximum of 25.

DISTINCTIVE FEATURES

A trademark gives an exclusive right to use a product or service on the market. Trademarks can be words or combinations of words, pictures, figures, symbols, graphs, letters, digits and three-dimensional shapes. A brand name gives an exclusive right to use a certain mark or name to identify an enterprise. Brand names do not have to coincide with the names of enterprises as they appear in the Companies House. Protection of a brand name is applicable nationally.

Protection of distinctive features lasts for 10 years as of the date of application and can be renewed indefinitely.

A trademark can be protected with effect across the entire European Union by applying for the corresponding community trademark at the European Union Intellectual Property Office (EUIPO) in Alicante.

Intellectual property

Intellectual property is the series of rights that creators and other owners (artists, producers, radio broadcasting organisations, etc.) have over the works and benefits that stem from their creation. It includes literary, scientific and artistic creations, etc.

Unlike industrial property, intellectual property comes into being at the same time as the creation, which does not have to be registered. This is known as "copyright".

However, despite not being necessary to hold this right, in Spain it is possible to register a creation at the Intellectual Property Office.

In Spain, as in the rest of European countries, software cannot be patented, as the Patent Act expressly excludes them from the list of inventions eligible for a patent. Any software, together with the documentation attached, is protected by copyright as intellectual property, although additional measures of protection are recommended, such as leaving it in the custody of a notary public.

Offices to apply for protection

Legal assistance and information on intellectual and industrial property rights and their protection

This section recommends some free legal services in the field of industrial and intellection property.