InterAlia’s patent services:

General advice, prosecution and actions before patent offices:

• Freedom-to-operate analysis
• Patent and utility model applications in Spain (direct or as PCT national phase)
• European patent applications (direct or as PCT regional phase)
• Validation of European patents
• Oppositions to Spanish and European patents
• Recordation of assignments and licenses

Dispute advice and litigation:

• Dispute assessment and advice about resolution strategies
• Drafting and answering cease and desist letters
• Out-of-Court settlement negotiations and drafting of agreements
• Litigation before the Spanish Courts acting on behalf of plaintiff or defendant in all sorts of proceedings concerning patent rights, such as:
• Patent infringement
• Revocation of patents (Spanish or validations or European patents)
• Disputes about patent ownership
• Court appeals from Spanish PTO decisions

Inter-Alia’s Spanish and European patent application service includes for a single charge:

• Filing of application
• Transmission of search report
• Requesting examination and reporting office actions or oppositions quoting costs for each possible option
• Reporting issuance of patent or refusal with advice about appeals
• Sending renewal fee notices

QUICK POINTS ABOUT PATENTS

• Spanish patents have these two peculiarities:
• Upon filing not only formal requirements are examined, but also certain substantive points: whether subject matter is not excluded from patentability, unity of invention and clarity of claims).
• The other substantive points (sufficiency of disclosure, novelty and inventive step) are examined after the search report and publication, but only if applicant opts for it. If he opts out, patent will nevertheless be granted.
• The first examination used to take so long that normally search report was not available within the priority year. But Spanish PTO has streamlined its operations so now the search report is established in about 10 months, or even in 6 months if applicant joins the Accelerated Granting of Patents scheme. Spanish PTO is also a member of the Patent Prosecution Highway program.
• A new Patents Act, due into force on 1 April 2017, introduces compulsory and full substantive examination for all patents.
• European patents follow the more standard procedure of formalities examination, search and full substantive examination. Opposition is post-grant within 9 months.
• After grant, proprietor must substantiate the patent in the European national offices of interest, thus ending up with a bundle of national patents, annual fees being payable to each office.
• Substantiation requirements vary greatly according to jurisdictions, from full translation (e.g. Spain, Italy), to translation of claims (e.g. The Netherlands) or nothing at all although an address for service may be notified (e.g. Germany, France)
• The European Union has regulated the so-called European Patent with unitary effect (“unitary patent”) which if proprietor so request, will do away with substantiation formalities and maintenance-fee paying in national offices (except Spain which has opted-out of the scheme; and national office of EP countries which are not EU-members, e.g. Switzerland or Turkey), substituting a single substantiation procedure before the European Patent Office, which will receive the annual maintenance fees.

These provisions will only come into force if and when EU member States agree on a Unified Patent Court, a complex court system to handle disputes concerning unitary patents.