The entry into force of the Spanish Patent Law 24/2015, on 1 April 2017, updated the legal reference framework in Spain and brought the Spanish patent system into line with the normative and regulative criteria used by reference patent offices such as the European Patent Office.
This new Law introduced, as notable developments in patent applications, a new granting procedure that includes the obligation to conduct a substantive examination, the possibility of holding an Oral Proceeding during such examination, as well as the possibility of filing a post-grant opposition.
By resolution of 6 February 2019, the SPTO published the Examination Guidelines for patent and utility models in which it showed in different sections, following the model of the European Patent Office, the interpretation criteria, evaluation of requirements, clarifications and examples of the different conceptual definitions and the steps in the processing of applications, in order to establish good practices in the processing of patent and model applications, as well as showing transparency in the justification of its decision-making in each of these procedures.
The aforementioned Guidelines are particularly useful for interpreting the new legal framework for utility models established by Patent Law 24/2015. Thus, for example, the new guidelines serve as a guide to interpret the requirement of a lower level inventive step that applies to utility models, regarding the fact that the claimed invention meets the requirement of inventive step only when it does not result from the state of the art in a VERY obvious way for a SKILLED person in the art.
In this regard, point 6.5.3 of the Guidelines set out the corresponding considerations to determine the inventive step of the claims of the models defining the skilled person as a qualified worker or informed user who, without being a technical expert (as is the case with patents), has a certain degree of knowledge in the field and, due to his interest in the products he deals with, he pays a degree of attention when using or manufacturing them. This new approach to determine the inventive step of models makes it possible to argue that a small improvement, alternative or refinement likely to provide an appreciable practical advantage may not be obvious to the skilled worker or informed user on the basis of the closest state of the art.
Article 148 of Law 24/2015 introduced a tool to compensate the lack of substantive examination in utility models, such as the need to request a State of the Art Report (SoA) on said utility model before exercising exclusive rights against possible third-party infringers, thus providing greater legal certainty to the granted utility model. This option of applying for the IET of a utility model, is explicitly extended in the Guidelines both to utility model holders, and to interested third parties who consider it appropriate to apply for such a SoA.
The Examination Guidelines, in this regard, indicate in point 5.1 that the SoA applicant, be it the utility model proprietor or a third party, may make allegations or observations to the examiner’s report, modify the claims, or even request the SoA withdrawal, although in this case the request for withdrawal will be noted in the public file without any mention of the result obtained. If the SoA is requested by a third party, the proprietor will be informed of said procedure. In this sense, the Guidelines do not limit the possibility of requesting one or more SoA reports for the same model.
The Guidelines also refer to the possibility of using different categories of independent claims in the same model application, which is not allowed under the Patent Law of 1986. Thus, for example, current practice allows the combination of apparatus/system and product claims in the same application. It is also possible to include product claims defined by their manufacturing process (Product by Process), by their composition, or even to refer to computer-implemented inventions. These latter must be of a technical nature and must be claimed with respect to a product, device or system, which has means to carry out the steps corresponding to the program instructions, allowing, for example, a combination of claims of the type:
- Data processing system/apparatus comprising means for carrying out step A …
- Computer program comprising software code adapted to perform step A … (when running on a data-processing system/device)
In summary, the new legal framework provides greater versatility to the registration of utility models, as well as greater legal certainty, which makes it an interesting option to protect so-called minor inventions.
Article by Xavier Prados.
