On April 15, a webinar was organized by Spanish Patent and Trademark Office (SPTO) that can be watched through its website. The intention of the SPTO was to announce that they are working in a draft to amend the IP laws (first draft is expected to be submitted before the Congress by the end of 2021).
The SPTO declared its willingness to seek consultations from different operators, among other judges, Association of Industrial Property Agents and other ministerial bodies.
Regarding trademark law: the SPTO intends to remove the applicant’s postal address when the application is published at the BOPI (to avoid the massive sending of fraudulent letters); establish a specific regulation that addresses the cases of cancellation of trademarks for lack of payment of the official fees of signs included in bankruptcy proceedings; and to increase the opposition fees, since the implementation of the proof of use system seems to have increased the workload of the trademarks area of the SPTO.
Regarding designs law: among other proposals, the SPTO intends to remove the grounds based on article 6 Ter CUP’s (emblems, shields, etc.) as ex officio ground for refusal; the reproduction “by reference” of the design would be allowed, when it is already in other files of the SPTO (in order to reduce the burden on the applicant); and the establishment of free public licenses is proposed, in such a way that the owner of a design offers a free, contractual, temporary and non-exclusive license under the condition that the licensee indicates the ownership of the design, for advertising purposes.
And with regard to patents: the possible extension of the object of utility models to substances and compositions for pharmaceutical use, which are not integrated into “large drugs”, will be considered; the rejection of patents that seek the protection of plants and animals obtained from essentially biological procedures would be expressly contemplated, in line with the latest decisions of the EPO; to expressly contemplate also the nullity of the Complementary Protection Certificate (CPC) when the base patent is revoked; It will also be proposed the removal of the exception to patentability of article 5.6 (DNA sequences), following the same logic of harmonization with European practices; possibility to stay Court’s proceeding when it has as its object a patent in respect of which an administrative decision is required (for example, an opposition procedure before the Office); and including in favour of Public Research Centres the same reduction of official fees that stated for Universities.
We will follow the next steps of this proposal.
