SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
excess claims/classes, and office action costs), appli- cants typically incur approximately EUR1,200–2,000 in OEPM fees, plus annual renewal fees that increase each year over the 20-year term. Representation before the OEPM is generally not mandatory, but applicants without residence or a registered address in an EU member state must act through a Spanish Industrial Property Agent. 1.3 Scope, Term and Maintenance of Patent Rights Spain grants patentees the exclusive right to prevent, without consent, making, offering, placing on the mar- ket, using, importing or possessing a patented prod- uct, and using/offering a patented process. Statutory limitations include private/non-commercial use, experimental use, the Bolar exemption for regula- tory trials, and EEA exhaustion; special rules apply to biological material. The patent term is 20 years from filing; effects run from publication of grant. Annual maintenance fees are due in advance (the filing fee covers the first two years). Missed annuities can be paid within six months with a 25%/50% surcharge; otherwise, the patent lapses, though limited post-grant regularisation may be avail- able in defined cases. Supplementary protection certificates (SPCs) are available for medicinal and plant protection products; a six-month pediatric extension may apply. During the SPC term (not the basic patent term), the EU “manufacturing waiver” allows EU-based mak- ers to: (i) manufacture for export to non-EU markets throughout the SPC; and (ii) manufacture for EU “day one” launch by stockpiling solely in the SPC’s final six months. 1.4 Ownership, Assignment and Licensing Spain recognises the inventor (or successors in title) as the initial owner of the right to apply for and own a patent; joint ownership is permitted, and the inventor must be designated.
Employee inventions are classified into: (i) employ- er’s inventions (made in execution of duties or spe- cific assignments), which belong to the employer; (ii) employee’s free inventions (unrelated to employment and without employer resources), which belong to the employee; and (iii) “assumable” inventions (related to the employee’s activity or made using employer means), which the employer may claim (ownership or a right of use) against fair compensation. Statutory notification and evidentiary rules apply; the regime extends to service relationships. For public research bodies and universities, ownership and transfer of IP arising from research are governed by their statutes under the Science Law framework, often with researcher revenue sharing mechanisms. Assignments, licences, pledges, and other inter vivos acts must be in writing to be valid. To be effec- tive against third parties in good faith, they must be recorded in the Patent Register (OEPM). 1.5 Patent Infringement and Defences Direct infringement covers, without consent, making, offering, placing on the market, using, importing or possessing the patented product, and using or offer- ing a patented process and the products obtained directly by it. Indirect (contributory) infringement cov- ers supplying or offering to supply unauthorised par- ties with means relating to an essential element of the invention, knowing that they are suitable for putting the invention into effect. Scope of protection is determined by the claims, inter- preted in light of the description and drawings; protec- tion extends to equivalents. Statutory defences and limitations include private/ non-commercial use, experimental use, the Bolar exemption for studies and trials needed for marketing authorisations, use on board foreign means of trans- port temporarily in Spain, exhaustion within the EEA, and certain uses for biological material. A prior user right protects those who, in good faith, were already using or had made effective and serious preparations to use the invention in Spain before the filing/priority date.
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