An International Guide to
Patent Case Management for Judges

12.1.1 Evolution and current state of the patent system

The origins of the current patent system in Spain date back to Law No. 11/1986 of March 20, 1986, on Patents (LP-1986).¹ In its day, that Law represented a complete overhaul of an obsolete patent regime based on principles established in the early 20th century. That reform took place in the context of Spain entering what was then called the European Economic Community. The negotiations for its entry included discussions on the provisions of and accession to the Convention on the Grant of European Patents, of October 5, 1973, or “European Patent Convention” (EPC).² LP-1986 incorporated provisions from that Convention and from the Luxembourg Convention on the Community Patent, of December 15, 1975.

After entering into force, LP-1986 underwent various partial revisions to adapt it to new regulatory developments within the European Union and internationally. A subsequent, more comprehensive revision resulted in Law No. 24/2015 of July 24, 2015, on Patents (LP-2015),³ which entered into force on April 1, 2017, and remains in effect today.

LP-2015 introduced some major innovations relative to LP-1986, and most significantly the following:

• The possibility of patenting previously known substances or compositions was explicitly recognized for use as medicines or new therapeutic applications.

• In addition to patents and utility models, explicit provision was made for industrial property rights in the form of supplementary protection certificates, to cover medicinal and plant protection products.

• Substantive examination (of novelty and inventive step), formerly optional for applicants, was established as the only procedure required for the granting of patents.

• A system of opposition was established for patents previously granted, under which anyone may oppose the granting of a patent within six months after publication of the grant, on the following grounds: (i) failure to meet patentability requirements; (ii) lack of sufficient clarity in the description; and (iii) patent protection beyond that specified in the application. Such proceedings are brought before the Spanish Patent and Trademark Office (SPTO), and can result in invalidation or modification of the patent.⁴

• The patent owner’s ability to obtain the amendment of their patent from the SPTO – and from courts in cases where civil litigation has been brought to invalidate a patent – was explicitly recognized.

• The regulations with regard to compulsory licenses were restructured and simplified.

• Provision was made for interested parties to settle patent disputes through mediation or arbitration.

With regard to patent-granting procedures, distinctions are drawn between three types of patents in Spain:

• patents obtained based on applications to the SPTO (after following a grant procedure established in the 2015 law);

• patents sought by means of an international application, subject to the Patent Cooperation Treaty (PCT)⁵ (in force in Spain as of November 19, 1989); and

• European patents validated in Spain (European patents are granted by the European Patent Office (EPO) in accordance with the EPC and produce effects in contracting States designated by the patent owner).

Patents granted by the SPTO based on an international application are equal, in terms of their effects and validity, to patents granted based on national applications.⁶

In the same way, European patents designating Spain produce the same effects and are subject to the same regime as Spanish patents.⁷ In this case, however, the patent owners must provide Spanish translations of their European patents, as granted,⁸ within three months after their publication.

As mentioned, LP-2015 continues to provide for utility models. Legislators cited the large number of applications for that modality and the high percentage of Spanish national applicants as justification for this decision. The newer law also continues to treat utility models as a sui generis form of IP, not a “simplified patent”. Significant changes have been made, however, to the earlier regulations. The current regime can thus be characterized as follows:

• State of the art, which is the benchmark used to assess novelty and inventive step, is understood in the same way for utility models as for patents, as referring to everything that was available to the public, in Spain or elsewhere, prior to the patent application filing date. The essential difference is that the level of inventiveness required for utility models remains lower than that for patents.

• The scope of protection for utility models is quite broad, excluding only inventions consisting of procedures and those relating to biological materials and pharmaceutical substances and compositions – understood as those used as medicines for humans or animals.

• The grant procedure for utility models does not entail a substantive examination.

• However, for actions to be brought against infringement, a report must be obtained on the state of the art for the subject matter of the industrial model concerned.

• The protection afforded for utility models entitles their owners to the same rights as those enjoyed by patent owners. On the other hand, the duration of protection for utility models is only 10 years, without the possibility of extension, compared to 20 years for patents.

Supplementary protection certificates for medicines and plant protection products are addressed in Section 12.13.1 below.

As a final point for this Section, it should be noted that Spain has not joined yet the system of European patents with unitary effect,⁹ which entered into force on June 1, 2023.