Practical guide for foreign researchers in Spain 2008

12. Industrial and Intellectual Property

Introduction

Intellectual property is related to creations of the mind: inventions, literary and artistic works, symbols, names, images and drawings and models used in business.

In the broadest sense, industrial and intellectual property is divided into two categories:

• Industrial property, which includes patents, trademarks, trade names and industrial designs.
• Copyright, which covers literary and artistic works, such as novels, poems and plays, films, musical works, works of art, such as drawings, paintings, photographs and sculptures, and architectural designs.

Due to the scope of this guide, we will focus on Industrial Property.

12.1. Protecting Inventions: Industrial Property

A. Patents

A patent is an exclusive right granted for an invention; that is, a product or procedure that generally provides a new way of doing something or a new technical solution to a problem. Patents may apply to new inventions that involve an inventive activity and can be used in industry. The three main requirements for that an invention must meet to be patented are the following:

1. New development on a global level
2. Inventive activity
3. Industrial application

As regards being a new development, it is important to keep in mind that an invention is considered as such when it is not part of the technical state of the art. The technical state of the art is anything that, prior to the date of application, has been made available to the public in Spain or abroad through a written or oral description, a usage or any other means. This means that any publication prior to applying to patent an invention cancels it out as a new development for patent purposes. Thus, to apply for a patent, any publication of the invention covered by that patent, whether at a conference, in a specialized publication, on the Internet, etc., must be later than the patent application date.

Patents are not given for discoveries, scientific theories, mathematical methods, literary, scientific or artistic works or any other esthetic creation, rules and methods for the exercise of intellectual, recreational or economic/commercial activities. Nor is patent protection given to inventions that go against public order, plant varieties (protected by their own special regulations), animal breeds and essentially biological processes designed to obtain plants and animals.

Spain's membership in the European Union has led Spanish legislation to follow the guidelines set forth be Community directives related to industrial property and, therefore, the legislation in our country is in line with that of the rest of the European countries.

In Spain, if the invention is not registered in advance, exclusive rights to it are not guaranteed. Unlike in the United States, for example, the first to file system is in effect: rights are granted to the first person to apply for the patent.

The principle of territoriality also applies, which means that protection is guaranteed only in the countries in which the patent is registered. In the rest of the countries, they may be used freely by others, since they are considered to be in the public domain. Therefore, registering the patent in the country of origin does not lead to automatic protection in other countries, making it necessary to ensure protection in those countries by registering there.

Spain has ratified the most important international agreements in this area, which, except in rare cases, enable people without Spanish citizenship to obtain due protection of their rights in our country, in addition to enabling Spanish nationals to receive protection in most of the other countries.

The modification of the Patents Act is a true step forward, as it incorporates the European Directive on legal protection for biotechnological inventions into Spanish law. This sets clear limits, placing special emphasis on defending morality and public order by excluding inventions from patent protection that go against those principles.

Patents are granted by a National Patent Office (in Spain, it is the Spanish Patent and Trademark Office: www.oepm.es) or by a Regional Office that works for several countries, such as the European Patent Office (EPO). This European system offers protection through a European patent application filed at a single patent office (EPO), written in a single language (English, French or German), in the European countries in which protection is sought, when they are signatories of the European Patent Agreement (34 countries as of 1 January 2008). The European patent application processed by the European Patent Office, once granted, goes into effect, in each of the countries for which it was granted, in the same way as a national patent.

Patents in Spain and in most other countries around the world are granted for a period of 20 years from the date of application. However, annual maintenance fees must be paid, which increase gradually each year. Following that period, the object of the patent passes into the public domain, where it can be used by any party.

However, in the pharmaceutical sector, the life of a patent for a chemical/pharmaceutical product may be extended up to a maximum of five years, depending on the delay related to obtaining the corresponding health authorization, by means of the "complementary protection certificate".

It is important to note that if the researchers believe that their invention is eligible for a patent, it must not be published in any way, as that would disqualify it as a new development, which is one of the requirements when registering the invention.

B - Utility Models

This type of protection is designed for inventions that, while new and involving an inventive activity, consist of giving an object a configuration, structure or construction that results in a practically significant advantage in its use or manufacture. Utility models require a lesser degree of invention than patents and, unlike the latter, they must be a new development on the national level, not globally. They are granted for a period of 10 years, so their duration is less than that granted for patents. This system is especially appropriate for the protection of tools, objects or other practical-use devices.

C - Industrial Designs

An industrial design is the appearance, in whole or in part, of a product, which is derived, in particular, from the characteristics of the lines, contours, colors, form, texture or materials of the product itself or its ornamentation. There are two-dimensional and three-dimensional industrial designs. There are currently three different ways to protect designs: National System, Community System (through the OHIM) and International System.

D - Semiconductor Product Topographies (microchips)

Spanish legislation offers 10-year protection for the topographies of semiconductor products (semiconductor integrated circuits known as chips). Protection is not provided for the integrated circuit itself, rather for its physical shape; that is, the physical layout of each of its elements.

E - Computer Software

Unlike the USA and Japan, in Spain, as in the rest of the European countries, computer software may not be patented, since the Patent Act excludes them expressly as inventions eligible for patents. The software, as well as the corresponding documentation, is protected by copyright as intellectual property, and it is treated, save for certain exceptions, in the same way as literary works.

Copyrights apply in Spain from the moment the work is created, without requiring any registration, thus granting automatic protection. However, it is always possible to file the work at the Intellectual Property Registry or deposit it with a notary public for the purpose of providing proof to others of any violations of the software copyright.

Unlike other legal systems, in Spain the copyright is always give in favor of the creator of the work, unless it was created as part of a working relationship. When the work was created to order, the copyright holder is the party who placed the order, not the author.

F - Obtaining Plants

The obtaining of plants is a type of industrial property that is covered by a legal system that, in many cases, is similar to that of patents. A plant variety is a set of clearly defined plants that are different from any other due to specific characteristics that are maintained through subsequent reproduction processes and may be propagated without alteration.

12.2. Work-related Inventions. Who must register an invention?

The law is very clear on this matter. The research may be working in any of these three situations:

• Company
• University
• Self-employment

Company

Inventions created by the working for the duration of the contract our working or service relationship with the company, which are the result of a research activity that is explicitly or implicitly a part of their contract, belong to the business owner.

The employee who creates the invention has no right to supplementary compensation for the creation, unless their personal contribution to the invention and its importance to the company clearly exceed the explicit or implicit content of the contract or working relationship.

University

The University owns any inventions created by a professor as part of his or her research activity at the university, corresponding to the scope of their teaching and research duties. The professor will have the right, in any case, to participate in the benefits obtained by the University by means of using or transferring the rights to the inventions. The University Statutes will determine type and amount of this participation.

Self-employment

Inventions that do not fall under either of the above categories belong to the employee who creates them.

12.3. Official Bodies. Where are patent applications filed?

Spanish Patent and Trademark Office

The Spanish Patent and Trademark Office (SPTO) is an Independent Entity of the Ministry of Industry, Tourism and Trade that promotes and supports technological and economic development by granting legal protection to the different types of industrial property by means of invention patents, utility models, industrial drawings and models, protection for semiconductor product topographies, trademarks, trade names and publishing information on them.

The SPTO has a dual mission:

• Granting the Industrial Property titles following examination of the corresponding applications.
• Offering Technological Information based on the information on the different types of Industrial Property granted by the SPTO and other foreign Industrial Property Offices.

See the SPTO website (www.oepm.es) for information on the procedures and the applicable legislation.

Office for Harmonization in the Internal Market (OHIM)

The Office for Harmonization in the Internal Market (OHIM) is the European Union's official body for registering trademarks, drawings and models in all European Union Member States. The mission of the OHIM is to register community trademarks and community drawings and models.

Registering drawings or models:

• Grants the right to use the drawing or model in business, to take legal action against offenders and to claim damages.
• Acts as a deterrent against piracy.
• Consists of a right that is acquired quickly, with few formalities, valid throughout the European Union market.

For more information, contact the European Office in Alicante, Spain:

European Patent Office (EPO)

The mission of the EPO is to support innovation, competitiveness and economic growth to benefit European citizens. Its duty is to grant European patents on inventions through a centralized procedure. By completing a single application in one of the three official languages (English, French or German), it is possible to obtain protection in any or all of the signatory States.

Property Agents Association (COAPI)

It is recommendable to work with an Intellectual Property agent for patent matters. The following are the contact details for the Intellectual Property Agents Association (COAPI). The web page includes a list of Agents from which you can choose the one that suits you most:

Data on patent applications in Spain 2004-2007

* Provisional data
** The source of the data is the SPTO database, which includes European patent applications that have been published. That is why the last two years are not complete, since the application publication time is 18 months.