Patents
What should you know?
Although we can addres you, for example, to the website of the European Patent Office at the Spanish Patent and Trademark Office, we would like to draw your attention to some of the problems that many patent applicants encounter. Therefore, before taking any action, and even before making any decision that entails risks of loss of opportunities for protection of an invention, risks in investments or collaborations with third parties, we note some basic and essential aspects of the rules governing patents:
Compliance with deadlines
In all activities related to the protection of an invention by means of a patent, observance of and compliance with deadlines is essential. Since the invention must not be disclosed prior to the filing of a patent application, it is essential to bear in mind that:
- Disclosing the subject matter of said invention prior to filing a patent application will never - with few exceptions - allow the patent to be obtained.
- Filing a second patent application for an invention outside the time limits and rules set by international conventions totally invalidates such second patent.
- Any failure to meet a deadline means in many cases a greater expense in obtaining the patent, and, in others, the complete loss of the right.
Priority period
The “priority period” is a period of twelve months available to the applicant to be able to file his patent application in other territories, maintaining the filing date of the first application. The twelve months start on the same day of the filing of the first patent application.
This period provides time to make strategic decisions and to continue developing the invention, as well as to decide on the commercial activity strategy, while delaying the time to incur the cost of extending the application to other territories.
This deadline is the most important and fundamental.
For more information on priority, please, refer to the text of the Paris Union Convention, 1883 (www.wipo.int).
Legal nature of a patent document
We must not forget that both, an application and a granted patent, are legal documents, and therefore, we will not be able to modify them whenever we want, or in any way we want. A direct consequence of the legal nature of a patent is that the initial text of the application must be so well drafted as to delimit the correct scope of protection of the invention, and to allow subsequent amendments in accordance with the laws of any country. Therefore, we must not lose sight of the fact that the impossibility of free modification imposed by the laws can have severe consequences for the applicant.
Geographical scope of protection of a patent
From a geographical point of view, patents have a strictly territorial scope of protection. For example, a Spanish patent only has effects in Spain, allowing the free use of the protected object outside this territory without infringing any rights.
Legal nature of a patent document
We must not forget that both an application and a granted patent are a legal document, and therefore, we will not be able to modify it whenever we want, or in any way we want. A direct consequence of the legal nature of a patent is that the initial text of the application must be so well drafted as to delimit the correct scope of protection of the invention, and to allow subsequent amendments in accordance with the laws of any country. Therefore, we must not lose sight of the fact that the impossibility of free modification imposed by the laws can have dire consequences for the applicant.
Geographical scope of protection of a patent
From a geographical point of view, patents have a strictly territorial scope of protection. For example, a Spanish patent only has effects in Spain, allowing the free use of the protected object outside this territory without infringing any rights.
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What type of patent can I apply for?
To apply for a Spanish patent some essential requirements are:
- Complete and detailed explanation of the invention
- Datos completos del solicitante e inventores.
- Payment of official fees
Once the patent has been applied for before the SPTO, we can extend it to other countries during the twelve months of the priority period mentioned above, according to the Paris Union Convention, maintaining the initial filing date.
To apply for a European patent the essential requirements we need are similar to those mentioned for the Spanish application.
Once applied for at the SPTO, or at the European Patent Office, we will be able to extend it to other countries during the twelve months of the priority term maintaining the initial filing date, under the same conditions as a Spanish application.
To file a PCT application the requirements are similar to those mentioned for the Spanish application.
Once the application has been filed, it may be extended to other countries by means of two options, which may be combined:
- During the twelve months of the priority period, maintaining the initial filing date, to any country belonging to the Paris Union Convention, under the same conditions as mentioned above for a Spanish or European application.
- During two and a half years (or 31 months in some cases) to any country or group of countries, belonging to the PCT.
And before applying for a patent...
Finally, before thinking about drafting and filing a patent application, it is essential not only not to have disclosed the invention but also to have conducted a background search so that our investment of time and money does not become useless. Our patent must protect a new invention, not obvious in relation to the state of the art and with industrial application.
This is not all...
We insist, the above points are only a brief overview of the world of patents.
Perhaps having read the above has helped you to realize that it was more complicated than expected, perhaps to decide that you need the help of a professional. In that case we invite you to contact us by email, by phone or through Linkedin.
We should know that as Spanish citizens or residents in Spain it is not compulsory to have the intervention of an agent to file applications before the Spanish Patent Office, nor before the European Patent Office, however, both recommend using the help of a specialized agent to solve any complications that may arise during prosecution.
More Information
For more information on any aspect related to the different industrial property modalities, the links below are useful and recommended.
www.oepm.es
Everything you need to know about how to draft, file and prosecute a patent application, what is and how to maintain a technological surveillance, etc.
www.epo.org
All information on European patent applications and patents, database, links to other patent offices, etc.
www.wipo.int
All the information on PCT applications, ways of extension of these applications, links to other offices and international legislation, etc.
www.euipo.europa.eu/es
All the information on PCT applications, ways of extension of these applications, links to other offices and international legislation, etc.