Spanish Intellectual Property Rights

Working in Europe | Intellectual Property Rights | Spain

It is essential to protect the knowledge generated by all public and private organisations in order to take advantage of the benefits it can potentially yield. Such protection, which in English-speaking countries is referred to as “Intellectual Property Rights”, is divided into two types of property rights in Spain:

  • Industrial property: the series of exclusive rights that protect innovative activity (new products, processes or designs) and commercial activity by way of exclusively identifying products and services on the market (trademarks and trade names).
  • Intellectual property: the series of rights that belong to creators and other knowledge owners in regard to the works and benefits stemming from their creation.

Industrial and intellectual property rights cover a wide range of legal forms, including patents, utility models, industrial designs, new varieties of plants, trademarks, brand names, trade secret, computer programmes and copyright, among others.

The next section covers those which are used most frequently. 

Industrial property

PATENTS

A patent is an exclusive right over an invention, that is, a product or procedure that in general provides a new way of doing something or a new technical solution to a problem. In other words, it is a temporary and territorial privilege that bestows upon its holder the power to prevent unauthorised third parties from manufacturing, selling or utilising the protected invention.

The three criteria[1] that must be met for an invention to be eligible for a patent are as follows:

1)    Worldwide innovation: an invention is considered new when it is not included in the state of the art. The state of the art includes everything that is available to the public, by any means and in any place, before submission of the patent application.

2)    Inventive activity: an invention has inventive activity if an expert in the field does consider it is evidently the result of the technical state-of-the-art.

3)    Industrial application: an invention is considered to be applicable to industry when it can be manufactured in any type of industry, including agriculture.

Therefore, new inventions that show evidence of inventive activity and can be applied in industry can be patented. The following can be patented: a procedure, a method of manufacture, a machine, device or product. Legally, this product can be composed of or contain biological material, and procedures by which biological material is products, transformed or utilised are permitted.

It is worth bearing in mind that:

  • The applicant for the patent must describe their invention such that the average expert in the field could implement it.
  • Publicising an invention before submitting a patent application cancels out the innovation. Publicising an invention before submitting a patent application cancels out the innovation. It is therefore vital for a researcher not to disseminate by any means an invention that he or she might be interested in patenting, including conferences, specialised publications, the internet, etc.
  • Discoveries, scientific theories, mathematical methods, literary, scientific or artistic works or any other aesthetic creation, regulations or methods for carrying out intellectual, recreational or economic and marketing activity cannot be patented.
  • Methods of surgical of therapeutic treatment of – or methods of diagnosis for – human or animal bodies are not considered to be inventions of possible industrial application and thus cannot be patented. However, patentable products include substances or compositions and inventions of devices or instruments for the implementation of the aforementioned methods.
  • Inventions contrary to law and order, varieties of plants (protected by their own special regulations), animal breeds or essentially biological processes intended to obtain plant varieties or animal breeds are not eligible for protection by way of a patent either.
  • Patents in Spain, as is the case in most countries in the world, are awarded for a period of 20 years from the date of application. After this period, the patented object becomes public domain and can be exploited by third parties.
  • Principle of territoriality: this means that protection is only obtained in the countries where the patent is registered. Therefore, registering the patent in the country of origin does not provide automatic protection in other countries. As a result, it is necessary to ensure protection by registering in each.
  • Right of priority: this right lays down that, from the date of the first patent application made in a country, the applicant has a period of twelve months to apply for protection in other countries by making subsequent applications in which the priority of the first application shall be cited. Thus all the subsequent applications are taken to be made on the date of the first; in other words, they will have "priority" over applications made by other people for the same invention in the period between the date of the first application and subsequent dates of presentation at the various national offices. The date of the first application is therefore taken to define the pre-existing State of the Art when the application is examined. Thus the applicant has a period of twelve months to decide in which countries he/she wishes to apply for protection, and does not have to present all the applications at the same time.

Sede de las oficinas de la Estación Biológica de Doñana, EBD, CSIC. Centro de Excelencia Severo Ochoa

Headquarters of the offices of the Doñana Biological Station, EBD, CSIC.

Processing a patent:

 Patents must be awarded by a national patent office, (the Spanish Patents and Trademarks Office in Spain), or by a regional office that works for various countries, such as the European Patent Office or EPO. This European system provides protection through a European patent application submitted to one patent office (EPO) only. The application must be submitted in only one language (English, French or German) in the European States where protection is desired, providing they are part of the European Patent Convention[2]. The European Patent Office processes all European patent applications, which have the same effect as any national patent in each of the States they are awarded for. There is another international treaty, the Patent Cooperation Treaty (PCT), that establishes a procedure for the international extension of patents: through this system the protection of an invention can be applied for by presenting a single application to each of the signatory states to the PCT (146 countries according to the World Intellectual Property Organisation[3], as at 1st March 2013) chosen by the inventor. The PCT route is not a patent concession procedure like the EPO, nor does it replace national concessions; it does, however, unify the processing of international protection[4].

Patent

UTILITY MODELS 

This type of protection is intended for inventions that, despite being new and the result of inventive activity, consist of endowing an object with configuration, structure or constitution that provides an appreciable practical advantage when it comes to using or manufacturing the object (the key structures are “utility” and “practicality”, not the object’s “aesthetics”).

They are awarded for a period of 10 years and do not, therefore, provide protection for as long as patents. This system is particularly suited to protecting tools, objects and other devices for practical use.

INDUSTRIAL DESIGNS 

A specific type of protection for shape creations (the key aspect is “aesthetics”). An industrial design gives the owner exclusive rights over the appearance of all or part of a product, stemming particularly from the features of lines, contours, colours, shape, texture or materials of either the product itself or its decoration. There are two- and three-dimensional industrial designs.

An industrial design provides protection for five years from the date of application and can be renewed for subsequent periods of five years up to a maximum of 25. 

DISTINCTIVE FEATURES 

A trademark gives an exclusive right to use a product or service on the market. Trademarks can be words or combinations of words, pictures, figures, symbols, graphs, letters, digits and three-dimensional shapes. An international trademark protection can also be obtained.

A brand name gives an exclusive right to use a certain mark or name to identify an enterprise. Brand names do not have to coincide with the names of enterprises as they appear in the Companies House. Protection of a brand name is applicable nationally.

Protection of distinctive features lasts for 10 years as of the date of application and can be renewed indefinitely. A trademark can be protected with effect across the entire European Union by applying for the corresponding community trademark at the Office for Harmonisation in the Internal Market (OHIM) (www.oami.europa.eu) run from Alicante.

Intellectual property

Interior del Institut de Recerca Biomèdica, IRB Barcelona. Centro de Excelencia Severo Ochoa

Institute of Biomedical Research, IRB Barcelona. Severo Ochoa Centre of Excellence

Intellectual property is the series of rights that creators and other owners (artists, producers, radio broadcasting organisations, etc.) have over the works and benefits that stem from their creation. It includes literary, scientific and artistic creations, etc.

Unlike industrial property, intellectual property comes into being at the same time as the creation, which does not have to be registered. This is known as “copyright”.

However, despite not being necessary to hold this right, in Spain it is possible to register a creation at the Intellectual Property Office.

In Spain, as in the rest of European countries, computer programmes cannot be patented, as the Patent Act expressly excludes them from the list of inventions eligible for a patent. Any computer programme, together with the documentation attached, is protected by copyright as intellectual property, although additional measures of protection are recommended, such as leaving it in the custody of a notary public.

Ownership of knowledge

Most inventions stem from within organisations (enterprises, universities, etc.); individual inventors are becoming increasingly rare. This makes it necessary to regulate the ownership of the results of R&D work performed by an employee within the scope of their professional activity.

As regards ownership, inventions can be:

  • Employee inventions: inventions made by employees while their contract or service relationship with an enterprise remains valid and which are the result of a research activity that is either expressly or implicitly part of the object of their contract, belong to the employer.
  • Free inventions: inventions made by employees when the above circumstances do not apply belong to the employees who made them.

Offices to apply for protection

Spanish Patents and Trademarks Office (SPTO)

Provides legal protection for the various forms of industrial property by awarding patents, utility models and industrial designs, among others.

http://www.oepm.es

European Patent Office (EPO)

For European patent applications. A centralised procedure that provides protection in some or all of the States that endorse the European Patent Convention. Only one application is required in one of the three official languages (English, French or German).

http://www.epo.org

Office for Harmonization in the Internal Market (OHIM)

The official European Union agency for registering trademarks, designs and community models.

http://oami.europa.eu

INTELLECTUAL PROPERTY OFFICE

Voluntary registering of literary, scientific and artistic creations, computer programmes, etc.

http://www.mcu.es/propiedadInt/CE/RegistroPropiedad/RegistroPropiedad.html

Legal assistance and information on intellectual and industrial property rights and their protection

This section recommends some free legal services in the field of industrial and intellection property. 

IPR-Helpdesk

Run by the European Commission, the IPR-Helpdesk offers basic legal assistance, especially in R+D projectos financed by the European Union.

http://www.iprhelpdesk.eu

InnovAccess

Portal created by national patent offices, the EPO and the OHIM to give information on intellectual and industrial property rights and their user services.

http://www.innovaccess.eu

TransAtlantic IPR Portal

Assistance provided by various national public agencies in Europe and the United States, mainly intended for SMEs.

http://ec.europa.eu/enterprise/initiatives/ipr/index_en.htm

CHINA IPR SME Helpdesk

Free practical information on intellectual and industrial property rights in China, mainly intended for SMEs.

http://www.china-iprhelpdesk.eu

ASEAN IPR SME Helpdesk

A free service promoted by the European Commission that provides practical information for SMEs in Europe on intellectual and industrial property rights in the Association of Southeast Asian Nations (ASEAN).

http://www.asean-iprhelpdesk.eu

Europeantmdn

The European Trade Mark and Design Network is a combined series of systems and practices designed to support users in obtaining the best possible service from the national, region and EU bodies that are responsible for Trade Mark and Design protection.

http://www.tmdn.org

[1] Further information in the Spanish Patents and Trademarks Office's information pamphlet Basic issues surrounding patents and utility modelshttp://www.oepm.es/cs/OEPMSite/contenidos/Folletos/06-cuestiones-basicas-patentes-modelos.html {available only in Spanish}

[2] At present, the 38 countries that are part of the Convention are: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, the F.Y.R. of Macedonia, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Rumania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. Protection can also be extended to Bosnia and Herzegovina and Montenegro, which, although not part of the Agreement, have signed extension agreements with the EPO.

[3] http://www.wipo.int {in English, French, Spanish, Chinese, Russisan and Arabic}

[4] Further information in the OEPM information pamphlet International Protection of Inventionshttp://www.oepm.es/cs/OEPMSite/contenidos/Folletos/07-proteccion-internacional-invenciones.html {available only in Spanish}.