12.5.1 Claim construction
The subject matter of a patent is a crucial starting point in understanding the scope of protection provided by public authorities for an exclusive right to the invention concerned. This is part of what makes the claims made in a patent so important.
The protected content of a patent consists of one or more claims, which define the subject matter of the patent for which exclusive rights are sought. These claims take concrete form in an invention’s technical features (structural and functional). They consist of one or more elements, the interrelationship between them and the technical effect they produce as the purpose of the invention.
There are various kinds of claims. They may relate to a physical entity (a product, substance or mixture), a device (an apparatus or machine) or even a system (a series of devices working together). A claim can also consist of an activity (procedures or methods for the manufacture of a product or even new uses for a product, such as previously known substances or compositions used as a medicine or for new therapeutic applications) (see Articles 6(4) and 6(5) of LP-2015). Claims relating to a physical entity protect the product or device in its entirety, and therefore convey the right for their owners to prevent third parties from exploiting them without the owner’s consent. The owners can thus prohibit others from manufacturing, offering, commercializing (using, importing or possessing for those purposes) the patented product (mechanical, electrical, nutritional, chemical, pharmaceutical, phytosanitary, microbiological, biological, genetic) irrespective of the procedure used to obtain it (since the claims relate to a physical object). Claims made for a procedure protect the operations used to transform one or more initial substances into one or more final products, enabling their holders to prevent only use of the patented procedure and offers thereof for use. Also, a claim for a procedure to obtain a product protects only the product obtained directly from that procedure – not manufacture of the product using a different procedure.
A claim is expressed as an explanation of positive features. Exceptionally, however, the scope of a claim may be limited in a negative manner by means of a disclaimer, so that one element is explicitly excluded from the claimed protection.
All patents must contain at least one independent claim – the claim that defines the entity or activity that constitutes a solution to a technical problem as identified in the application. The independent claim must clearly specify each and every one of the features necessary to define the invention – unless such features are implicit in the generic terms used.
The patent may include more than one independent claim in the same category (product, procedure, device or use), but must comply with the requirement of “unity of invention”. That means that the claims must have subject matter in common forming a single general inventive concept. It must otherwise be divided among different patents.
The independent claim can (optionally) then be followed by one or more dependent claims, structured so as to add one or more technical features. This results in a scope more limited than the claim on which they depend but without altering the essential nature of the invention. Dependent claims can embody different, more specific versions of the invention.
The claims must be clear, concise and based on the description.50 They provide the basis for determining whether the patentability requirements (novelty, inventive step and industrial applicability) have been met. The content and form of claims is regulated precisely (see Article 7 of the Implementing Regulations for the Law on Patents, approved by Royal Decree No. 316/2017, of March 31, 2017 (Implementing Regulations for the Law on Patents)51, regarding the national patents and the Implementing Regulations to the Convention on the Grant of European Patents, with reference to national patents). Under these regulations, claims must include, first of all, a preamble indicating the subject matter of the invention and the precise technical features used to define the elements claimed, which combine to constitute the state of the art. Claims must then include a section explaining the technical features (characterization section), which combined with the content of the preamble represents what the patent is intended to protect. Whereas the preamble provides the context and characterizes the invention, it is the characterization section that contains the actual inventive elements.52 That is where the technical features to be protected, presented as novel, are explained.
Patents are not the only industrial property instruments for protecting inventions under Spanish law. LP-2015 provides for two others. The first, utility models, require novelty, inventive step and industrial applicability but are considered “minor” inventions. They offer a configuration, structure or composition to give an object or product some practically appreciable advantage for use or manufacture (Articles 2 and 137 of LP-2015). The second, supplementary protection certificates, are for medicines and plant protection products. For a maximum duration of five years they provide the same protection as a patent for the active ingredients or combinations of active ingredients of medicines or plant protection products after patent protection expires, to compensate for the time required to complete the formalities entailed in obtaining marketing approval (Articles 2 to 6 of Regulation (EC) 469/2009 of the European Parliament and of the Council of 6 May 2009,53 in conjunction with Articles 45 to 47 of LP-2015). The general analysis of what constitutes an infringement of exclusive rights also applies to these titles, albeit with certain particularities in each case.