Amendments to the Spanish Patent Act

16 October 2008

Fidel Porcuna

On 15 September 2008, the Spanish Government passed the amendments to the Spanish Patent Act that include a new provision relating to obligatory additional contents of the State-of-the-Art Search Report (issued by the Spanish PTO in relation to national patent applications). Under this new provision, the examiner must prepare a written, preliminary opinion (non-binding) on novelty, inventive step and industrial use of the patent application in respect to all relevant documents disclosed in the patent search.

The State-of-the-Art Search Report is the outcome of a search report on the basis of the claims, with due regard to the description and any drawings, of a patent application. The applicant must request the Spanish PTO to carry out this search within 15 months from the filing or priority date. Failure to make such a request will result in the lapse of the patent application.

Under the previous regulation (in force until 16 September 2008), the examiner's role was limited to describing and classifying all retrieved documents pursuant to a code according to its relevance in relation to each claim of the examined patent. For example, ‘X’ means a "[document] of particular relevance", ‘Y’ means a "[document] of particular relevance in combination with alike or same category" and A means that the invention "reflects the State-of-the-Art" such that A was the best result for the applicant). Although in a way this indication could be construed as an opinion, it was still vague and therefore open to a wide interpretation. For instance, when faced with an X, how exactly and/or to what extent is that document particularly relevant to the invention? This code-based system, in combination with the general granting procedure that secures registration irrespective of the contents of the State-of-the-Art Search Report, gave scope for applicants obtain patents that were eventually held to be invalid.

In contrast, the examiner is now expected to give a proper opinion beyond a simple "indication" so that the applicant can better understand to what extent the patent sought is new, has inventive step and industrial application and decide accordingly whether or not to continue with the patent registration. Although the accuracy of the examiner's opinion is not guaranteed and it only states if the examined invention "seemingly" fulfils the requirements of patentability, it may well constitute an extra tool for third parties (and indeed the Courts) to asses validity of a patent in the context of invalidity or infringement actions, and it may help to ultimately improve the quality of and strength of granted patents.

The new provision came into force on 16 September 2008 and will be affect all patent applications whose State of the Art Search Report were requested from that date onwards.