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TITLE V GRANTING OF PATENTS

Chapter I Filing and Requirements for Patent Applications

21.

(1) In order to obtain a patent, it shall be necessary to file an application comprising

(a) an application addressed to the Director of the Registry of Industrial Property;
(b) a description of the invention for which the patent application is made;
(c) one or several claims;
(d) the designs to which the description or claims refer; and
(e) an abstract of the invention.

(2) Where an addition is being applied for, this should be stated clearly in the application together with an indication of the number of the patent or patent application to which the addition refers.

(3) Filing of a patent application shall be subject to payment of the fees laid down in the present Law.

(4) The application and all other documentation filed with the Registry of Industrial Property shall be written in Spanish and shall meet the legally established requirements.

(5) In the Autonomous Communities, the documents referred to in paragraph (4), above, may be filed with the offices of the Autonomous Administration where the latter has been given the necessary competence. The documents may be written in the official language of the Autonomous Community and shall be accompanied by the corresponding translation in Spanish; where there are discrepancies, the latter shall be deemed to be the authentic text.

22.

(1) The date of filing shall be that upon which the applicant hands over to the Spanish offices authorized to accept patent applications the following documents drawn up in the form specified in Article 21, above:

(a) a declaration of the patent's subject matter;
(b) designation of the applicant; and
(c) a description and one or several claims, even if they do not meet the formal requirements laid down in the present Law.

(2) Where during the patent procedure, the subject matter of the application is either totally or partly changed, the date of filing shall be deemed to be that on which the change to the part concerned was introduced.

23.

Patent applications shall indicate the inventor. Where the applicant is not the inventor or is not the sole inventor, this indication shall be accompanied by a declaration stating how the applicant acquired the right to the patent.

24.

(1) Patent applications may not cover more than one invention or a series of inventions so related one to the other that they form a single overall inventive concept.

(2) Applications that are not in accordance with the provisions laid down in the preceding paragraph shall be divided in accordance with the prescribed provisions.

(3) Divided applications shall have the same date of filing as the original application from which they derive, provided that their subject matter was already contained therein.

25.

(1) The invention shall be described in the patent application in a sufficiently clear and comprehensive manner to enable a person skilled in the art to carry it out.

(2) Where the invention refers to a microbiological process for which the microorganism is not available to the public, the description shall only be deemed to fulfill the requirements specified in the preceding paragraph if the following conditions are met:

(a) the description contains the information the applicant possesses regarding the characteristics of the microorganism;
(b) the applicant has deposited, no later than the date of filing the application, a culture of the microorganism with an authorized institution in accordance with the relevant international conventions in force in Spain; and
(c) the public has access to the culture of the microorganism in the aforementioned institution as from the date of publication of the patent application and under the prescribed conditions.

26.

Claims shall define the object for which protection is sought. They shall be clear and concise and shall be based on the description.

27.

(1) The abstract of the invention shall be exclusively used for technical information purposes. It may not be taken into account for any other purpose; in particular, it may not be used to define the scope of the protection sought nor to delimit the state of the art for the purposes of the provisions of Article 6(3), above.

(2) The Registry of Industrial Property may modify the abstract of the invention where it considers it necessary in order to provide better information to third parties. Such modification shall be notified to the applicant.

28.

(1) Any person who has duly filed an application for a patent, a utility model, a utility certificate or an inventor's certificate in any of the countries members of the Paris Union, as well as their successors in title, shall, when filing a patent application in Spain for the same invention, enjoy the right of priority laid down in the Paris Convention.

(2) The right of priority mentioned in the preceding paragraph shall also be enjoyed by any person who has filed an original application for protection in a country which, although it does not belong to the Paris Union, recognizes for applications filed in Spain a right of priority with the same effects as those laid down in the Union's Convention.

(3) As a result of the exercise of the right of priority, for the purposes of the provisions set out in Articles 6(2) and (3), 10(3), 109, and 145(1) and (2), the date of filing the patent application shall be deemed to be the date of filing of the earlier application whose priority has been rightfully claimed.

29.

(1) Any applicant wishing to claim priority for a previous application shall submit, in the form and within the period laid down, a declaration of priority and a copy of the earlier application certified by the Office of origin, accompanied by a translation in Spanish where the application has been made in another language.

(2) Multiple priorities may be claimed for the same application and, where appropriate, for the same claim, even though they may originate in a number of States. Where multiple priorities are claimed, the periods to be calculated from the date of priority shall be computed from the earliest date of priority.

(3) Where one or several priorities are claimed, the right of priority shall only protect those aspects of the application that are contained in the application or applications whose priority has been claimed.

(4) Where certain aspects of the invention for which priority is claimed do not appear in the claims set out in the earlier application, priority for those aspects may still be granted if they are shown in a sufficiently clear and detailed manner in the ensemble of the documents comprising the previous application.

Chapter II General Procedure for Granting Patents

30.

Within eight days following their receipt in its office, the Registry of Industrial Property shall directly reject applications that do not fulfill the necessary requirements to obtain a date of filing in accordance with Article 22(1), above, or for which the corresponding fee has not been paid, and it shall inform the interested party accordingly.

31.

(1) Where an application has been accepted for consideration, the Registry of Industrial Property shall verify whether it meets all the formal requirements laid down in the preceding Chapter and whether they have been fulfilled in the prescribed form. The adequacy of the description shall not be the subject of verification.

(2) The Registry of Industrial Property shall also verify whether or not the subject matter of the application meets the requirements of patentability laid down in Title II of the present Law, except those of novelty and inventive step. After hearing the interested party, the Registry of Industrial Property shall, however, refuse the grant of a patent, giving justified reasons, when the invention that is the subject matter of the application clearly and obviously lacks novelty.

(3) Where the result of the examination shows that the application has formal defects or that its object is not patentable, the patent procedure shall be declared suspended and, where appropriate, the applicant shall be allowed the prescribed period to rectify the defects indicated and to put forward his relevant arguments. For that purpose, the applicant may modify his claims or divide the application.

(4) The Registry of Industrial Property shall totally or partly reject any application when it deems that its subject matter is not patentable or that it contains defects that have not been duly rectified.

(5) Where examination by the Registry of Industrial Property shows that there is no impairment to granting a patent or when any defects have been duly rectified, the Registry shall inform the applicant that, for the patent procedure to continue, he should request the establishment of a report on the state of the art within the period laid down in the present Law, if this has not already been done.

32.

(1) Eighteen months after the date of filing the application or the date of priority claimed, when verification has been carried out and the applicant has requested the report on the state of the art referred to in Article 33, below, the Registry shall proceed to make the patent application available to the public by publishing in the Official Bulletin of Industrial Property those elements that are specified in the regulations.

(2) At the same time, a pamphlet of the patent application shall be published containing the description, the claims, and, where appropriate, the drawings and other elements specified in the regulations.

(3) At the request of the applicant, the patent application may be published, in accordance with the provisions of this Article, before the expiration of the period of 18 months referred to in paragraph (1), above.

33.

(1) Within 15 months of the date of filing, the applicant shall request the Registry to establish a report on the state of the art and shall pay the relevant fee. Where priority has been claimed, the period of 15 months shall be calculated from the date of priority.

(2) Where the period established in the preceding paragraph has already expired at the time of making the notification referred to in Article 31(5), above, the applicant may request the establishment of a report on the state of the art during the month following such notification.

(3) Where the applicant does not fulfill the conditions laid down in the present Article, his application shall be deemed to have been withdrawn.

(4) The establishment of a report on the state of the art may not be requested for an addition unless a report has been requested previously or simultaneously for the principal patent and, where appropriate, for earlier additions.

(5) Where it is possible to base the report on the state of the art either partly or entirely on the international search report drawn up under the Patent Cooperation Treaty, the applicant shall have 25%, 50%, 75% or 100% of the fee refunded, depending on the scope of the said report.

(6) There shall be no report on the state of the art for applications in respect of which the international search report has been drawn up by the Spanish Patent and Trademark Office acting as International Searching Authority.

34.

(1) When verification of the application provided for in Article 31 has been carried out and the applicant's request for a report on the state of the art has been received, the Registry shall proceed to establish the said report on the subject matter of the patent application within the prescribed period.

(2) The establishment of the report may not be commenced until, within the framework of the patent procedure, the date of filing has been finally fixed.

(3) The report on the state of the art shall mention those elements of the state of the art that should be taken into consideration in order to assess the novelty and inventive step of the invention that is the subject matter of the application.
The report shall be based on the claims in the application and shall take into account the description and, where appropriate, the drawings submitted.

(4) For the purpose of establishing the report, the Registry may not only seek information from its own sources, but may also use the services of national and international bodies whose collaboration has previously been approved in general by means of a Royal Decree.

(5) After the report on the state of the art has been established, the Registry shall transmit it to the patent applicant. It shall also publish a pamphlet containing the said report and shall insert the relevant announcement in the Official Bulletin of Industrial Property.

(6) Unless it has already been published, the patent application shall be published at the same time as the report on the state of the art.

35.

(1) Where lack of clarity in the description or claims wholly or partly prevents establishment of the report on the state of the art, the Registry shall refuse to grant the patent for the corresponding part.

(2) Before making a final decision on refusal to grant the patent, the Registry shall inform the applicant accordingly, allowing him the prescribed period to put forward the arguments he deems relevant.

36.

(1) Any person may formulate duly substantiated and documented comments on the report on the state of the art in the form and within the period specified in the Regulations.

(2) When the period allowed for third parties to submit comments on the report on the state of the art has expired, the comments submitted shall be transmitted to the applicant so that, within the relevant prescribed period, he may make the observations he deems relevant to the report on the state of the art, respond to the comments submitted by third parties and, if he deems it necessary, modify the claims.

(3) In patent grant procedures relating to technological sectors for which the grant procedure with prior examination under the Royal Decree referred to in the Fifth Transitional Provision is applicable, once publication of the report on the state of the art has taken place, the period provided for in Article 39(2) shall start, suspending the proceedings, during which time the applicant may file the request for prior examination or express his desire to continue with the general grant procedure. Where that period expires without the applicant having made a statement on the subject, the procedure shall resume in accordance with the provisions of the foregoing paragraphs, with the provisions on the general grant procedure laid down in this Chapter being applicable. Resumption shall be announced in the Official Bulletin of Industrial Property.

37.

(1) Independently of the content of the report on the state of the art and the comments made by third parties, when the period allowed for the applicant's observations has expired, the Registry shall grant the patent applied for, announcing the fact in the Official Bulletin of Industrial Property, and it shall make available to the public the documents concerning the patent granted, together with the report on the state of the art and all the observations and comments made thereon. Where the claims have been modified, it shall make available to the public the various versions thereof showing their respective dates.

(2) Grant of the patent shall be without prejudice to third parties and with no guarantee by the State as to its validity or the utility of the object to which it refers.

(3) Announcement of the grant of a patent to be published in the Official Bulletin of Industrial Property shall include the following indications:

1. the number of the patent granted;
2. the class or classes to which the patent belongs;
3. a concise description of the invention that is the subject matter of the patent granted;
4. the first name and surname or the trade name of the applicant, together with his nationality and domicile;
5. an abstract of the invention;
6. the number of the issue of the [Official] Bulletin [of Industrial Property] in which the patent application and, where appropriate, the modifications made to the claims, were published;
7. the date on which the patent was granted;
8. the possibility of consulting the documentation concerning the patent granted, as well as the relevant report on the state of the art and the observations and comments made thereon.

38.

(1) A pamphlet concerning each patent granted shall be published for sale to the public.

(2) In addition to the indications mentioned in Article 37(3), above, the pamphlet shall contain the full text of the description, together with the claims and designs, as well as the full text of the report on the state of the art. It shall also mention the issue of the Official Bulletin of Industrial Property in which grant of the patent was announced.

Chapter III Procedure for Granting Patents with Prior Examination

39.

(1) In those cases where it is applicable, in accordance with the Fifth Transitional Provision, the procedure shall be the same as the general procedure described in the preceding Chapter of the present Law until such time as the request for examination referred to in the following paragraph is made.

(2) During the six months following the publication of the report on the state of the art, the applicant may ask for the examination of the adequacy of the description, the novelty and the inventive step of the subject matter of the patent application to proceed. The request for prior examination shall only be considered validly filed after payment of the examination fee; it shall be irrevocable and shall be published in the Official Bulletin of Industrial Property.

(3) Where it is possible to base the prior examination either partly or entirely on the international preliminary examination undertaken by the competent International Preliminary Examination Authority, the applicant shall have 25%, 50%, 75% or 100% of said fee refunded, depending on the scope of the said report.

(4) During the two months following the publication of the examination request, any interested party may oppose the grant of the patent, citing the absence of any of the requirements laid down for such grant. The opposition document shall be accompanied by the appropriate supporting documents.

(5) Any allegation that the applicant has no right to apply for a patent shall not be allowed, however, since this is a matter for the ordinary courts.

(6) When it has completed its verification, the Registry shall notify the applicant of the result and shall transmit to him any opposition submitted.

(7) Where no opposition has been received and the verification has shown that no requirement has been omitted, the Registry shall grant the patent applied for.

(8) Where the provisions of the preceding paragraph do not apply, the applicant may rectify defects of form in the application, modify the claims if he deems it necessary, and contest opposition, putting forward the arguments he deems appropriate.

(9) Where the applicant does not act in response to the objections put forward by the Registry or by third parties, the patent shall be totally or partly refused. In other cases, the Registry shall decide, giving its reasons, whether or not to grant the patent in full or in part after having received the arguments of the applicant.

(10) Where the reasons given by the Registry specify that one of the formal conditions has not been met or that the invention is not patentable, the Registry shall allow the applicant another period to make good the defect or to put forward the arguments he deems appropriate and shall then take a final decision on granting the patent.

(11) The periods referred to in respect of the procedure outlined in the present Article shall be fixed in the Regulations.

40.

(1) The grant of a patent through a procedure with prior examination shall be without prejudice to third parties and with no guarantee by the State as to its validity or the utility of the object to which it refers.

(2) Announcement of the grant of a patent to be published in the Official Bulletin of Industrial Property shall include the following indications:

1. the number of the patent granted;
2. the class or classes to which the patent belongs;
3. a concise description of the invention that is the subject matter of the patent granted;
4. the first name and surname or the trade name of the applicant, together with his nationality and domicile;
5. an abstract of the invention;
6. the number or numbers of the issue or issues of the [Official] Bulletin [of Industrial Property] in which the patent application and, where appropriate, the modifications made, were published;
7. the date on which the patent was granted;
8. the possibility of consulting the documentation concerning the patent granted, as well as the relevant report on the state of the art, the document showing the result of the Registry's verification of the novelty and inventive step, the adequacy of the description, and the petitions submitted opposing grant of the patent;
9. a separate statement specifying that the patent has been granted after prior examination as to the novelty and inventive step of the invention that is its subject matter.

(3) For each patent granted, a pamphlet shall be published for sale to the public. In addition to the indications mentioned in the preceding paragraph, the pamphlet shall contain the full text of the description, together with the claims and drawings, as well as the full text of the report on the state of the art. It shall also mention individually petitions submitted opposing grant of the patent and the issue of the Official Bulletin of Industrial Property in which grant of the patent was announced.

Chapter IV General Provisions Concerning Procedure and Information for Third Parties

41.

(1) With the exception of those cases involving rectification of obvious errors, the applicant may modify the claims in his application at any stage of the grant procedure where it is specifically permitted under the present Law.

(2) The applicant may modify the claims in accordance with the preceding paragraph without having to obtain the consent of those possessing rights in his application recorded in the Patent Register.

(3) Modification of the claims may not imply widening of the scope of the application.

42.

(1) The applicant may at any time transform his patent application into an application for the protection of the subject matter under another form of industrial property until expiration of the period allowed for submitting comments on the report on the state of the art or, in the case of procedure with prior examination, until expiration of the period for responding to opposition and objections resulting from the prior examination carried out by the Registry.

(2) Following verification carried out in accordance with the provisions of Article 31, above, the Registry may propose to the applicant that he change the form of his application. The applicant may accept or reject this proposal and shall be deemed to have rejected it if he does not specifically request a change in the form of his application. Where the proposal is rejected, the procedure shall continue in the form applied for.

(3) Where the applicant requests a change in form, the Registry shall accept the change and shall inform the interested party of the documents he should submit within the prescribed period for the new procedure to be followed by his application. Failure to submit the new documentation within the prescribed period shall lead to annulment of the procedure.

(4) Where the decision allowing a change in form is taken after publication of the patent application, it shall be published in the Official Bulletin of Industrial Property.

43.

(1) The applicant may withdraw his patent application at any time before the patent is granted.

(2) Where the Patent Register shows that third parties have rights in the application, the latter may only be withdrawn with the consent of the owners of those rights.

44.

(1) Documentation concerning patent applications not yet published may only be consulted with the consent of the applicant.

(2) Any person who proves that a patent applicant has tried to make use in his regard of the rights derived from the application, may consult the documentation before publication and without the applicant's consent.

(3) Where a divided application, a new patent application filed in accordance with the provisions of Article 11(1), or an application following a change in the form of protection under the terms of Article 42 is published, any person may consult the documentation regarding the original application before its publication and without the applicant's consent.

(4) Following publication of the patent application, the documentation concerning the application and, where appropriate, the relevant patent, may be consulted subject to the appropriate request and the prescribed restrictions.

45.

(1) Documentation concerning applications that have been rejected or withdrawn before publication shall not be made available to the public.

(2) Where an application as mentioned in the preceding paragraph is renewed, it shall be considered to be a new application and may not benefit from the date of filing of the previous application.

46.

(1) Any person who, in respect of a third party, invokes rights derived from a patent application or a patent already granted shall inform the latter of the relevant number.

(2) Any person who uses on a product, labels or packaging, or in any form of announcement or printed matter, any mention giving the impression that protection under a patent application or a patent already granted exists, shall indicate the relevant number, without prejudice to the provisions of Article 44(2).

Chapter V Appeal

47.

(1) In accordance with the provisions of the Law Governing Contentious Administrative Jurisdiction, any interested party shall be entitled to lodge a contentious administrative appeal against the grant of a patent without having been obliged to submit comments on the report on the state of the art or to state opposition during the grant procedure with prior examination.

(2) Contentious administrative appeals may only concern the omission of essential steps during the procedure or other questions decided upon by the Administration during the grant procedure, with the exception of the question of unity of invention.

(3) Under no circumstance may an appeal be made against the grant of a patent alleging lack of novelty or an inventive step in the application's subject matter when the grant procedure took place without prior examination.

48.

A judgment admitting the appeal, based on the grant of a patent when the Registry of Industrial Property had failed to verify one of the formal requirements, with the exception of the requirement of unity of invention, or when essential steps in the procedure had been omitted, shall lead to annulment of the administrative action concerned and retroactivity of the procedure to the point at which the defects mentioned in the judgment occurred.

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