In accordance with the Spanish Patent Law, the first application for a patent made in Spain must be filed at the Spanish Patents and Trademarks Office and penalties can be imposed in the event of the breach of this requirement. This is why it is important to be able to justify the registration of the patent in another territory, if it is not initially registered in Spain.

For some time now, many globally active Spanish companies have been initiating the strategy to protect their innovations by filing patent applications in foreign countries, especially the United States. Many of them also prefer to file their initial applications as international applications or European applications at the European Patent Office in Munich (EPO), instead of filing a Spanish application at the Spanish Patents and Trademarks Office (SPTO).

The reason is obvious: to optimize the resources used for intellectual property protection, by firstly requesting protection in the counties in which they pursue their main activities. Moreover, having industrial property assets that have been prosecuted by prestigious foreign bodies, is also useful in many aspects of the business in its initial stages, including due diligence processes in which potential investors will attach a great deal of importance to the company’s registration strategy.

However, following the entry into force of Patents Law 24/2015 (PL), we need to reassess whether this is always the best strategy.

Compulsory application for protection in Spain

The PL came into force on April 1, 2017 and shares with the former Patents Law 11/1986, the provisions that make it compulsory, for reasons of national security, to file the first application for a patent made in Spain at the Spanish Patents and Trademarks Office (SPTO). In this regard, article 115.1 of the PL provides as follows:

“Applications for inventions made in Spain for which priority has not been claimed from an earlier application in Spain, may not be filed in any foreign country before the time periods envisaged in article 111.1 have elapsed, unless express authorization is given by the Spanish Patents and Trademarks Office. Such authorization may not be given for inventions of interest to national defense, unless expressly authorized by the Ministry of Defense”.

In addition, as opposed to the former law, the PL does impose penalties if this provision is breached. If this compulsory requirement to file the initial application at the SPTO is breached, the patent will not take effect in Spain (articles 152.2 and 163.3 of the LP).

In short, current legislation forces the applicant to file the first application for an invention made in Spain at the SPTO. Failure to do so may lead to the subsequent loss of protection of the patent in Spain for the same invention.

What is an invention made in Spain?

The answer is far from clear. Article 115.3 of the PL simply states that if the applicant’s domicile, registered office or principal residence is in Spain, it shall be presumed, unless proven otherwise, that the invention was made in Spain. However, the word used is “presumed”, so evidence can be provided to the contrary. That is, it is possible to evidence that although the applicant is Spanish and domiciled in Spain, the invention may not have been made in Spain and is therefore not subject to the obligation to file the first application in Spain.

Many scenarios may arise. For example, what if the inventors live totally or partially in a foreign country but the applicant is Spanish and resides in Spain? Each case would have to be resolved according to the validity of the evidence submitted to justify that the invention was made or was not made in Spain.

It is important to highlight that the SPTO does not look at this aspect ex officio, and will therefore grant or refuse the patent application irrespective of whether the provisions of article 115 LP have been met. The question would arise and would have to be resolved after the grant of the patent, as a result of a third party’s initiative and in the context of a legal proceeding.

In light of the above, we recommend that if the applicants are Spanish nationals, with their principal residence in Spain, but did not make the invention in Spain, it is absolutely essential that they compile as much evidence as possible to justify that the invention was effectively not made in Spain.

How can you prove that an invention has been made in Spain or abroad?

Neither the PL nor the Regulations for the implementation of the PL contain any information that helps us answer this question. Furthermore, at present there is no case law on the matter either, since the absence of penalties in the previous law if the application was not filed in Spain, made its application irrelevant in practice.

It therefore may be possible, that in cases in which the applicant is Spanish and resides in Spain and as a result the invention is presumed to have been made in Spain, the fact that the inventors named in the patent application reside outside Spain would be considered a relevant aspect to prove that the invention was made substantially outside Spain. In such event, it would be advisable to compile as much evidence as possible to be able to justify, if necessary, the substantial and decisive contribution of those inventors to the invention protected by the patent.

Finally, the SPTO has determined that where it is impossible to prove that the invention has been made totally in Spain, because there is more than one inventor or applicants of different nationalities with different domiciles or registered offices, and all the persons involved (inventors/applications) are domiciled, have their registered office or principal residence in countries that have ratified the North Atlantic Treaty or the Farnborough Agreement, and at least one of them is Spanish, there is no need for authorization, provided that the patent application is filed at the national office of a country that signed one of those agreements.

What other measures can be used to avoid future risks?

In accordance with article 115.1 LP, it is possible to avoid the obligation to file at the SPTO the initial application for a patent made in Spain, by obtaining express authorization from the SPTO to file that first application abroad.

More details are provided regarding that authorization in article 50 of the Regulation for the implementation of the PL, which establishes the procedure involved and states that the request for authorization must be confidential, that is, it should not be entered in the record of steps taken in the prosecution of the patent. If authorization is obtained, the applicant may file the initial patent application in the country of interest in accordance with legislation in force.

Conclusion

In view of the above and the lack of specific rules on cases that are not totally classified as an invention made in Spain or outside Spain, our recommendation is to always request prior authorization from the SPTO and avoid any future risk of the patent no longer being effective in Spain.