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TITLE VIII PATENT APPLICATIONS AND PATENTS AS INDUSTRIAL PROPERTY Chapter I Joint Ownership and Expropriation 72. (1) Where a patent application or patent already granted belongs to a number of persons in undivided parts, the resultant co-ownership shall be governed by agreement among the parties or, in its absence, by the provisions of the present Article, or, ultimately, by the common law provisions on joint ownership. (2) However, any one of the parties alone may (a) dispose of the part belonging to him, notifying the other parties that they may exercise their rights to trial and prior purchase. The time limit for exercising the right to trial shall be two months from the date of sending the notification, and for prior purchase it shall be one month from the date of recording the assignment in the Patent Register; (b) work the invention following notification to the other joint owners; (c) carry out the acts required to maintain the application or patent; (d) bring civil or criminal action against third parties who in any way injure the rights conferred by the joint application or patent. The party exercising such action shall be obliged to notify the other parties of the action taken so that they may also take part. (3) A license to a third party to work the invention shall be granted by the parties jointly, unless the judge deems that, for reasons of equity given the particular circumstances, one of the parties should be authorized to grant the said license. 73. (1) Any patent application or patent already granted may be expropriated for reasons of public utility or public interest, subject to fair compensation. (2) Expropriation may be for the purpose of placing the invention within the public domain so that it may be freely worked by any person without the need to apply for licenses, or it may be for the purpose of exclusive working by the State, which would then acquire ownership of the patent. (3) Public utility or public interest shall be declared in the Law authorizing the expropriation [Ley que ordene la expropiacion], which shall also state whether the invention shall fall within the public domain or whether the State shall acquire ownership of the patent or application. The procedure to be followed shall conform in every aspect, including fixing of fair compensation, to the general procedure laid down in the Law on Compulsory Expropriation[Ley de Expropiacion Forzosa]. Chapter II Transfer and Contractual Licenses 74. (1) Both patent applications and patents shall be transferable and may be the subject of licenses and use. They may also be used as security for personal loans, which shall be governed by the relevant provisions, and such use shall be notified to the Registry of Industrial Property. (2) To be valid, the acts mentioned in the preceding paragraph shall be in writing when performed inter vivos. (3) For the purposes of assignment or transfer, patent applications and patents already granted shall be indivisible, even where they belong jointly to several persons. 75. (1) Both patent applications and patents may be the subject of licenses covering the whole or part of the element constituting the exclusive right, for all or part of the Spanish territory. Licenses may be exclusive or non-exclusive. (2) The rights conferred by the patent or application may be exercised against a licensee who violates the restrictions placed on the license in accordance with the provisions of the preceding paragraph. (3) Unless otherwise agreed, holders of contractual licenses may not transfer them to third parties nor grant sub-licenses. (4) Unless otherwise agreed, holders of contractual licenses shall have the right to carry out all the acts comprised in working the patented invention, for all applications, on the whole of the Spanish territory and for the whole term of the patent. (5) Unless otherwise agreed, a license shall not be deemed to be exclusive and the licensor may grant licenses to other persons and work the invention himself. (6) Exclusive licenses shall prevent the granting of other licenses and the licensor may only work the invention if he has specifically reserved this right in the contract. 76. (1) Unless otherwise agreed, any person who transfers a patent application, a patent already granted or who grants a corresponding license, shall be obliged to make available to the transferee or licensee the technical data he possesses that is necessary to work the invention satisfactorily. (2) The transferee or licensee to whom secret data has been communicated shall be obliged to take the necessary measures to prevent their disclosure. 77. (1) Unless otherwise agreed, any person who transfers a patent application or a patent already granted or who grants a corresponding license against payment shall be responsible if subsequently it is declared that ownership or the means necessary for completing the business in hand are lacking. Where an application is withdrawn or refused or a patent is invalidated, the provisions of Article 114(2), below, shall apply, unless there is agreement on the increased liability of the transferor or licensor. (2) The transferor or licensor shall be liable when he has acted in bad faith. Unless there is proof to the contrary, bad faith shall mean that the other party has not been informed, by means of specific mention of each document in the contract, of the Spanish or foreign reports or decisions available or known to the transferor or licensor concerning the patentability of the invention that is the subject matter of the application or patent. (3) The time limit for the action referred to in the preceding paragraphs shall be six months from the date of the final decision or judgment on which it is based. The provisions of the Civil Code [Codigo Civil] on compensation for eviction shall apply. 78. (1) Any person who transfers a patent application or a patent already granted or who grants a corresponding license shall be liable jointly with the transferee or licensee for compensation due as a result of damage or prejudice caused to third persons by defects inherent in the invention that is the subject matter of the application or patent. (2) The transferor or licensor who has assumed the liability mentioned in the preceding paragraph may claim from the transferee or licensee the amounts paid, unless it has been otherwise agreed, he has acted in bad faith or, given the circumstances of the case and for reasons of equity, he should bear all or part of the compensation due to third parties. 79. (1) Patent applications and patents already granted shall be recorded in the Patent Register in the prescribed form. (2) With the exception of the case provided for in Article 13(1), above, any transfer, license or other act, whether voluntary or compulsory, affecting patent applications or patents already granted shall only have effect against third parties of good faith when it has been recorded in the Patent Register. (3) Rights in patent applications or patents may not be invoked against third parties unless they are duly recorded in the Register. Neither may products mention a patent application or a patent unless an appropriate right has been recorded. Acts carried out in violation of the provisions of the present paragraph shall be punished as acts of unfair competition. (4) No authorization shall be given for payment in foreign currency in fulfillment of obligations under contracts that are subject to recording in the Patent Register when such has not been done. (5) The Registry of Industrial Property shall assess the legality, validity and effects of the acts to be recorded in the Patent Register and they shall be contained in a public document. The Register shall be public. 80. Where a patent owner has been convicted of serious violation of the provisions of Law 110/1963 of July 20, 1963, concerning the suppression of restrictive competitive practices [Ley 110/1963, de 20 de julio, sobre represion de las practicas restrictivas de la competencia], the judgment may compulsorily place the patent under the regime of ex-officio licenses (licenses of right). In such cases, there shall be no reduction in the amount of the annual fees to be paid by the patent owner. Chapter III Ex-Officio Licenses 81. (1) Where the owner of the patent offers ex-officio licenses, informing the Registry of Industrial Property in writing that he is willing to authorize the use of the invention by any interested party in the capacity of licensee, the annual fees to be paid for the patent shall be reduced by half following receipt of his declaration. Where there is a total change in ownership of a patent as a result of the exercise of the legal action provided for in Article 12, above, the offer shall be considered to have been withdrawn when the new owner is entered in the Patent Register. The Registry shall enter in the Patent Register and shall give appropriate publicity to offers of ex-officio licenses. (2) The offer may be withdrawn at any time through notification in writing addressed to the Registry of Industrial Property, provided that no person has informed the owner of the patent of his intention to use the invention. Withdrawal of the offer shall take effect from the time of notification. The amount of the corresponding reduction in fees shall be paid within the month following withdrawal of the offer, the provisions of Article 161(3), below, shall apply in such cases and the period of six months provided for therein shall be calculated from the end of the period previously specified. (3) Licenses may not be offered when the Patent Register shows that there is an exclusive license or that an application for an exclusive license has been made. (4) Following the offer of ex-officio licenses, any person may be entitled to use the invention in the capacity of a non-exclusive licensee. A license obtained in conformity with the provisions of the present Article shall be deemed to be a contractual license. (5) When a license offer has been made, no application to enter an exclusive license in the Patent Register shall be permitted unless the offer has been withdrawn or is deemed to have been withdrawn. 82. (1) Any person who wishes to use the invention on the basis of an offer of an ex-officio license shall notify the Registry of Industrial Property accordingly in triplicate, indicating the use he intends to make of the invention. The Registry shall send to the owner of the patent by registered post one copy of the notification and shall send another copy back to the applicant. Both copies shall bear the stamp of the Registry and the same date of dispatch. (2) The applicant for a license shall be entitled to use the invention in the form indicated one week after the date of dispatch of the notification by the Registry. (3) In the absence of agreement between the parties, the Registry of Industrial Property, at the written request of one of the parties and after having heard both parties, shall fix a reasonable amount for the remuneration to be paid by the licensee or shall modify it if subsequent facts have occurred or have become known which show that the amount fixed is obviously insufficient. Requests for modification of the remuneration fixed by the Registry of Industrial Property may only be made after a period of one year has elapsed since it was previously fixed. Any request to fix or modify the remuneration shall only be taken into consideration if the corresponding fee has been paid. (4) At the expiration of each quarter of the calendar year, the licensee shall inform the owner of the patent of the use he has made of the invention and shall pay the corresponding remuneration. Where he does not fulfill those obligations, the owner of the patent may grant him an additional period that will reasonably allow him to do so. If he has not done so at the expiration of that period, the license shall be annulled.

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