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Intellectual property is related to creations of the mind: inventions, literary
and artistic works, symbols, names, images and drawings and models used in commerce.
In a broader sense, we can say that industrial and intellectual property is
divided into two categories:
Given the purpose of this guide, we will focus on Industrial Property.
A. Patents
A patent is an exclusive right granted for an invention, that is, a product
or process that provides, in general, a new way of doing something or a new
technical solution to a problem. Patent protection will only be granted for
novel inventions that involve an inventive step as well as industrial applicability.
For an invention to be patentable, it must meet the following three requirements:
a. Worldwide novelty
b. Inventive step
c. Industrial applicability
With regard to the novelty, it must be taken into account that an invention
shall be considered to be new if it does not form part of the state
of the art. The state of the art comprises everything made available
to the public in Spain and abroad by means of a written or oral description,
by use, or in any other way, before the date of filing of the patent application.
This means that an invention made available to the public before filing of the
patent application automatically destroys the novelty of the invention. Therefore,
patent applications must be filed before any public disclosure of the invention,
be it at a congress, in a specialised magazine, via the Internet, etc.
Patents are not granted for: discoveries, scientific theories, mathematic methods,
literary, scientific and artistic works or any other aesthetic creation, rules
and methods for the pursuit of intellectual activities, games, economic and
commercial activities. Also excluded from patent protection are inventions whose
exploitation would be contrary to public order, plant varieties (protected by
specific plant variety rights), animal varieties or essentially biological processes
for the production of plants or animals.
As Spain is a member of the European Union, Spanish lawmaking authorities have
adopted the standards set by EU guidelines concerning industrial property. Therefore,
Spanish legislation is on equal terms with the rest of European countries.
In Spain, an invention must be previously registered in order to acquire exclusive
rights to the invention. Contrary to what happens in the USA for example, in
Europe the first-to-file principle is applied: the first to file the application
is entitled to the grant of the patent.
Patent protection is furthermore governed by the principle of territoriality,
which means that patent protection is only enjoyed in those countries where
the patent is registered. In any other country, the invention can be freely
used and exploited by third parties, as it is considered to be public property.
Accordingly, registration of the patent in the country of origin does not automatically
provide protection in other countries, so in order to secure protection it will
be necessary to also register the invention in other countries.
Spain has ratified the major international agreements in this area, which –
except for rare exceptions – provide for the protection of rights in Spain
of individuals who do not hold the Spanish nationality and grant protection
to Spanish nationals in the majority of the remaining countries.
The modification of the Patent Law – which consists in the incorporation
of the European Directives on the legal protection of biotechnological inventions
into Spanish law – has turned out to be a major advance. The European
Directives set clear limits on the Spanish legislation, attaching special importance
to the defence of morality and public order by excluding from patentability
any invention of which the exploitation is contrary to the aforementioned principles.
Patents are granted by a National Patent Office (In Spain,
Spanish Patents and Trademarks Office: www.oepm.es)
or by a regional Office covering several countries, such as
the European Patent Office (EPO). This system provides protection through a
European patent application presented in one of the European Patent Offices
(EPOs), drafted in one of the official languages (English, French or German),
in those European countries where protection for the invention is sought and
which form part of the European Patent Agreement (31 countries on 1st January
2006). The European Patent Application, processed by the European Patent Office,
has the same effect as a national patent, once it has been granted, in each
of the States for which it is granted.
Patents in Spain, and in most countries of the world, are granted for a period
of 20 years from the date of application. Nevertheless, to maintain the patent
in force, it is necessary to pay annual maintenance fees, which are increased
every year. When the term of the patent expires, the invention becomes public
property and can be commercially exploited by third parties.
In the pharmaceutical sector however, the term of a patent covering a chemical-pharmaceutical
product may be extended by a Complementary Protection Certificate up to a maximum
of five years depending on the delay in the issuance of the corresponding health
authorisation.
It is worth pointing out once more that researchers who believe their invention
to be eligible for patentability should by no means make them available to the
public, as this would destroy the invention’s novelty required for patent
protection.
B – Utility models
This modality of protection is granted to inventions that – possessing
novelty and involving an inventive step – are considered to be a new configuration,
structure or mechanism of any object, that results in a functional improvement
in its use or manufacture. Utility models require a lower level of inventive
step than patents and require only nationwide novelty (contrary to the requirement
of worldwide novelty for patents). Utility models are granted for a shorter
period (10 years) than patents (20 years). This form of protection is particularly
useful for protecting tools, objects and other devices of everyday use.
C – Industrial designs
An industrial design is the external appearance of the whole or part of an article
resulting from features of, in particular, lines, contours, colours, shape,
texture or materials of the product or its ornamentation. Industrial designs
can be two-dimensional or three-dimensional. At present there are three different
ways to apply for protection of industrial designs: National System, European
Community System (through the OAMI) and International System.
D – Topographies of semiconductor products (microchips)
Spanish law grants a 10-year protection period for topographies of semiconductor
products (semiconductor integrated circuits, also known as chips). The object
of protection is not the integrated circuit, but the physical aspects of the
object, that is, the physical arrangement of all its elements.
E - Computer programmes
Contrary to what happens in the USA and Japan, computer programmes in Spain,
as well as in the rest of European countries, are not eligible for patent protection,
as they are not considered as patentable inventions within the meaning of the
European Patent Law. Computer programmes and the programming information are
protected by copyright in the field of intellectual property and have, except
for rare exceptions, the same treatment as literary works.
In Spain, copyright arises automatically on the creation of the copyright work,
without the need for registration. It is however possible to register the copyright
work at the Intellectual Property Register or get a notary attest for the purpose
of providing proof before third parties in case of infringement of the copyright
of programmes.
Contrary to the legislation of other countries, the ownership of copyright in
Spain is always granted to the author of the copyright work, unless it was created
in the course of employment. If the work is created within the scope of employment,
the employer and not the author is the owner of the copyright.
F – Plant varieties
Plant varieties are a modality of industrial property governed by a substantially
similar regime to that of patents. A plant variety is a well-defined plant grouping
with several distinctive features that remain unchanged in successive reproduction
processes and has the ability to self-propagate without alteration.
Law is very clear in this respect. The researcher can be working in one of the following three situations:
Company
Inventions, created by employees in the course of their employment relationship
with the company, which are the result of a research activity which may be implicitly
or explicitly deemed a part of the object of the employment contract, shall
belong to the employer.
The employee, as the author of the invention, will only be entitled to a compensatory
remuneration if the personal contribution for the invention and the importance
of it for the company obviously exceeds explicitly or implicitly the content
of the contract or the work relation.
University
The ownership of inventions created by university professors while conducting
research at the university in the scope of their teaching and research activities,
shall belong to the University. Nevertheless, the university professor is entitled
to participate in the benefits gained by the university through the exploitation
or licensing of the copyrights on the invention. The University Statutes shall
determine the terms and amounts of this participation.
Independent
Ownership of the copyright on inventions that were not created under any of
the abovementioned circumstances shall belong to the employee, as author of
the invention.
Spanish Patents and Trademarks Office
The Spanish Patents and Trademarks Office (OEPM) is an Independent Organisation
of the Ministry of Industry, Tourism and Commerce responsible for the promotion
and support of technological and economic development by providing legal protection
to the different modalities of industrial property through the concession of
invention patents, utility models, industrial designs and models, protection
of topographies of semiconductor products, trademarks and trade names, and by
disseminating information on patent registration.
The OEPM has, thus, a twofold mission:
The web page of the OEPM (www.oepm.es) offers plenty of information on the procedures and legislation in force.
Address and telephone numbers:
c/ Panamá, 1
28071 Madrid
Tel: (central) 91 792 58 04
Tel: 902 157 530 (opening hours: from Monday to Friday from 9:00 to 14:30 h.)
Fax: 91 349 55 97
Office of Harmonisation for the Internal Market (OHIM)
The Office of Harmonisation for the Internal Market (OHIM) is an official organisation
of the European Union for the registration of brand names, trademarks and designs
in all EU Member States. The OHIM is in charge of the registration of EU
trademarks and EU models and designs:
Trade mark and design registration:
For more information, please contact the European Office in Alicante (Spain):
OAMI (OHIM)
Avda. de Europa, 4.
Apartado de Correos 77. 03080 Alicante (Spain)
Tel.: +34 96 513 88 00
E-mail: information@oami.eu.int
Web: http://oami.eu.int/
European Patent Office (EPO)
The mission of the EPO is to support the innovation, competitiveness and economic
growth for the benefit of all European citizens. Its mission is to grant European
patents on inventions through a centralised procedure. By filling out one single
application form in one of the three official languages (English, French or
German) you can be granted protection in one or all the signatory countries.
Spanish Association of Industrial Property Agents (COAPI)
When registering patents, it is recommended to work with an Industrial Property
Agent. Below you find the contact details of the Spanish Association of Industrial
Property Agents (COAPI). The web page of the COAPI has a list of Agents from
which you can select the agent of your choice:
COAPI
Montera, 13 - 28013 Madrid
Tel: 91 522 38 24
Fax: 91 522 13 03
Web: www.coapi.org
|
Patent Application |
1999 |
2000 |
2001 |
2002 |
2003 |
| National way (direct) |
2,859 |
3,111 |
2,094 |
3,055 |
3,081 |
|
Residents |
2,438 |
2,709 |
2,523 |
2,763 |
2,804 |
|
Non-residents |
421 |
402 |
381 |
292 |
277 |
| European way (direct) |
49,166 |
53,356 |
55,377 |
47,164 |
52,000 |
|
Residents |
308 |
315 |
359 |
359 |
n.d. |
|
Non-residents |
48,858 |
53,041 |
55,018 |
48,641 |
n.d. |
| Euro-PCT |
71,123 |
87,817 |
100,683 |
109.486 |
92,000 |
|
Residents |
440 |
606 |
634 |
626 |
n.d. |
|
Non-residents |
70,683 |
87,312 |
100,149 |
106.375 |
n.d. |
| PCT(at national level) |
86 |
83 |
91 |
76 |
89 |
|
Residents |
1 |
2 |
5 |
8 |
n.d. |
|
Non-residents |
85 |
81 |
86 |
71 |
n.d. |
|
EUROPEAN PATENT APPLICATIONS
WITH PRIORITY IN SPAIN |
|||||
|
365 |
469 |
449 |
309 |
n.d. |
|
Source: Spanish Trademarks and Patents Office.
Published in the 2003 Annual R&D&I Report. Ministry of Education and Science.
As shown in the data presented above, 2003 saw a 0.85% increase in the number
of patent applications filed for by residents at the Spanish Trademarks and
Patents Office. With regard to the patent applications filed for through the
European way (applications presented directly at the European Patents Office
and which are designated to Spain), the increase as compared to 2002 amounted
to 10.25%.
