Patents PDF

LESSON 7 INVENTIONS (PATENTS) 1. Introduc,on 2. Patentable Inven,ons 3. Right to a patent 4. Grant of a patent: Procedure 5. Patentee ri...

LESSON 7 INVENTIONS (PATENTS) 1. Introduc,on 2. Patentable Inven,ons 3. Right to a patent 4. Grant of a patent: Procedure 5. Patentee rights 6. Nullity, revoca,on and expira,on of patents 7. Infringement of patents 8. U,lity models  1. Introduction Concept: A patent is a document, issued, upon application, by a national or regional office which describes an invention and creates a legal situation in which the patented invention can only be exploited (manufactured, used, sold, imported) by the owner of the patent or with their authorization. The patent is the right (IPR) granted by the State to an inventor to exclude others from commercially exploiting the invention for a limited period, in return for the disclosure of the invention, so that others may gain the benefit of the invention. The disclosure of the invention is thus an important consideration in any patent granting procedure. Rationale of the patent system: The grant of a patent permits the inventor to derive the material benefits to which they are entitled as a reward for their intellectual effort and work, and to get a compensation for the expenses which their research and experimentation leading to the invention have entailed. The system serves as well the general interest in so far as innovation is promoted (less waste of money and time, incentives to invest) and consumers get better and more innovative products quicker. 2  1. Introduction Notion of “Invention”: a solution to a specific problem in the field of technology Classification of patents: Product, process or improvement inventions: an invention may relate to a product (substance, machine), a process (successive steps to obtain a result), or even a “new application” (of a product or process already existing) Dependent patents: some inventions build on prior ones (and both may be patented) à If a patent cannot be exploited without infringing another patent, it is said to be dependent on that other patent: The ‘second’ patent does not confer its owner the right to also exploit the ‘first’ patent (nor conversely) à the patentees usually agree to licence (or cross-licence) the patents, but if the owner of the first patent rejects the agreement, in the EU all national patent laws provide for rules on mandatory (compulsory) dependency licensing. Time-limit: The protection conferred by the patent is limited in time (generally 20 years). Similar IPR: In some countries (e.g. Spain) inventions are also protectable through registration under the name of “utility model”: requirements are somewhat less strict than for patents, especially regarding of the requirement of “inventive step” the fees are lower, and the duration of protection is shorter than for patents otherwise, the rights under the utility model are similar 3  1. Introduction NaIonal, regional and global protecIon (see Lesson 1) Na,onal (Spain): Ley 24/2015 de Patentes Regional (EU): “Classic” European patent (EP): based on the Conven,on on the Grant of European Patents 1973 (the Munich Conven,on, or European Patent Conven,on) h`ps://www.epo.org/law-prac,ce/legal-texts/html/epc/2016/e/ma1.html Creates the European patents (EP), managed by the European Patent Office (EPO): one applica,on BUT, if granted, it can be validated in the contrac,ng par,es (through EPO) and becomes a bunch of na,onal patents governed by na,onal laws The “patent with a unitary effect” or “Unitary patent” (next slide) Global: Paris Conven,on for the Protec,on of Industrial Property (1883) Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Patent Coopera,on Treaty (1970) Strasbourg Agreement Concerning the Interna,onal Patent Classifica,on (1971) 4  1. Introduction The “patent with a unitary effect” = “Unitary patent (UP)” https://ec.europa.eu/growth/industry/strategy/intellectual-property/patent-protection-eu/unitary-patent_es https://www.epo.org/law-practice/unitary/unitary-patent.html Rules: EU Regulation 1257/2012: creates a “European patent with unitary effect” (UP) EU Regulation 1260/2012: translation arrangements for UP Both entered into force on 20.01.2013, but they only apply as from the date of entry into force of the UPCA Agreement on a Unified Patent Court (UPCA): Agreement ratified by 17 Member States à into force since 1 June 2023 minimally harmonises substantive patent law re the right conferred by a UP and its limitations, and remedies (arts. 25-30) creates one single Court to deal with the infringement and validity of both UP and “classic” EP BUT jurisdiction regarding “classic” European patents is subject to exceptions during a transitional period of 7 years à during this period, actions concerning “classic” European patents may still be brought before national courts or other competent national authorities; furthermore, “classic” European patents can be opted out entirely from the UPC’s jurisdiction (notification to that effect by the latest one month before expiry of the transitional period). 5  1. Introduction The “patent with a unitary effect” (cont.) Main features: Based on the “classical” European patent: after the grant of a European patent, its “unitary effect” can be requested (at the EPO) for the territory of the 25 participating Member States Unitary effect = Uniform protection throughout the EU member states participating in the enhanced cooperation (UP system): art 5.1 Regulation 1257/2012 à next slide 1 Office (EPO) and 1 Register (Register for Unitary Patent Protection) à 1 fee 1 jurisdiction in case of litigation = Unified Patent Court (also for “classical EP”, unless the owner applies for an “opt-out” of its jurisdiction) à applicable rules according to art. 24 UPCA: EU law: basically Regulation 1257/2012 à applicable national law arts. 25-30 UPCA: minimum substantive harmonisation à right to prevent direct or indirect use of the invention (arts. 25 and 26), limitations of the effects of a patent (art. 27), prior use (art. 28), exhaustion (art. 29), supplementary protection certificates (art. 30). European Patent Convention (Munich Convention): main substantive Law other international treaties national laws ex Reg. 1257/2012 (next slide) 6  1. IntroducIon “Unitary effect” (arts. 3, 5 and 7 Reg. 1257/2021): selected national law (≠ EU trademark or design) Art. 3: “A European patent granted with the same set of claim sin respect of all the participating Member States shall benefit from unitary effect in the participating Member States provided that its unitary effect has been registered in the Register for unitary patent protection” Art. 5.1 “The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitation” BUT Regulation 1257/2012 does not include substantive patent law (≠ EU trademark or EU design Regulations) à applicable Law? Art. 5.3 refers to art. 7: “The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 7” Art. 7: a UP shall be treated in its entirety and in all the participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register 7.1.(a) the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or 7.1.(b) the applicant had a place of business on the date of filing of the application for the European patent; or art. 7.3: State where the European Patent Organisation has its headquarters (Germany) 7  2. Patentable Inventions In order to be patentable, an invention must satisfy 3 requirements (art. 4.1 LP, art. 52.1 MC): novelty inventive step industrial application But before, relevance of the concept of “invention” (next slide) à There are both findings and intellectual creations that are not considered inventions (art. 4.4 LP; 52.2. MC), and inventions that cannot be patented (art. 5 LP; 53 MC) European Patent Guide, Chapter 3: Patentability https://www.epo.org/applying/european/Guide-for-applicants.html Guidelines for examination, Part G: Patentability https://www.epo.org/en/legal/guidelines-epc/2024/index.html 8  2. Patentable Inventions A) Concept of “Invention” The EPC does not define the meaning of "invention” (nor the Spanish LP) but the accepted general notion is “a solution to a specific problem in the field of technology” à Even if there is no legal concept, the rules contain a list of “non-inventions” and “inventions that are non-patentable”. A1) The following are not considered inventions (art. 52.2 MC; art. 4.4 LP): Discoveries, scientific theories, mathematical methods Literary or artistic works, or any other aesthetic creations or scientific works Plans, rules and methods to make intellectual activities, games, economic activities, or computer programs Forms to present information Remarks: The 1st are not intellectual creations, but simple findings of whatever element or notion that already exists The last 3 do not solve a problem in the field of technology None has industrial application They might be granted IP protection via author’s rights (copyright) 9  2. Patentable InvenIons A2) The following are considered inventions but cannot be patented (art. 53 MC; art. 5 LP): Inventions contrary to public order (e.g. cloning of human beings; processes for modifying the germ-line genetic identity of human beings; the use of human embryos for industrial application; processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal) BUT an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may be patentable: its industrial application must be disclosed in the patent application) Plant or animal varieties specific protection for plant varieties (“plant variety right): e.g. in the EU, Community Plant Variety Office (https://cpvo.europa.eu/en) Essentially biological proceedings (such as crossing or selection) to obtain vegetables or animals: protection based on industrial secrecy, under Unfair competition rules (e.g. art. 13 LCD under Spanish Law), BUT if not “essentially” (e.g. with substantial human intervention) they can be patented (restrictive examination by the Office) microbiological proceedings and its resulting products are patentable, e.g. antibiotics, vaccines… Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body 10  2. Patentable Inventions B) Patentability requirements: novelty, inventive step, industrial application 1.- Novelty (54 MC; art. 6 LP) The invention is new (novel) if it does not form part of the state of the art (art. 54.1 MC) / it is not anticipated in the prior art (art. 6.1 LP) “state of the art” (art. 54.2 and 54.3 MC) / “Prior art” (art. 6.2 and 6.3 LP): everything already available to the public (next slide) Novelty cannot be really proved: only absence of novelty can be tested Objective novelty (legal standard as defined by MC or LP, by reference to the prior state of the art) Ability of the public to access the invention suffices to infringe novelty status: no actual awareness necessary 11  2. Patentable Inventions state of the art (art. 54.2 and 54.3 MC) / prior art (art. 6.2 and 6.3 LP) everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application + the content of patent applications filed before that date i) everything made available to the public (under LP, specification “available in Spain and abroad”) à universal novelty ii) either by written or oral description, by use, or by any other mean/in any other way iii) includes patent or utility model applications filed in Spain / EU patent applications, filed before the date of filing of the patent application that it’s examined iv) exceptions to disclosure in art. 55 MC / art. 7 LP period of grace that does not infringe novelty status (6 months after publication) only in 2 scenarios: Official public exhibitions Abuse (workers, agents, etc. that have a contractual duty to keep secrecy) 12  2. Patentable Inventions 2.- Inventive step (art. 8.1 LP; art. 56 MC) the invention must not be obvious to a person skilled in the art (art. 56 MC) / must not result from the prior art in an evident way for an expert in the field (art. 8.1 LP) person skilled in the art (expert in the field, LP): a skilled practitioner in the relevant field of technology who has an average knowledge and ability (average skilled person) "obvious” (evident, LP): what does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art (i.e. it does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art) "problem/solution" approach (i.e. if the solution presented to the problem in the patent application is obvious or not to the person skilled in the art) Signs of inventive step: relevance of the invention in the field, long search for solution to a problem; possible new inventions built on it... 3.- Industrial application (art. 9 LP; art. 57 MC) “the object of the invention can be manufactured or used in any kind of industry, including agriculture” à meaning that the invention can be executed o repeated, that it is possible to obtain the foreseen result in a regular and stable basis 13  3. Right to a patent Right to a patent (art. 60 MC; art. 10 LP): It means the right to apply for a patent It’s different from the “patent right” (= the exclusive right on the invention, granted by the Office) The right to a patent (to apply for a patent) belongs to the inventor there can be several inventors: joint application and ownership (art. 59 MC; art. 10.2 LP) à slide 17 if 2 persons made an invention independently of each other, the right to a European patent therefor shall belong to the person whose European patent application has the earliest date of filing (art. 60.2 MC; art. 10.3 LP) BUT, the right to a patent is a patrimonial right à it can therefore be transferred: if this is the case, the person who acquires that right is the one entitled to apply for the patent (and the one who will become its owner if the patent is granted) The inventor has always the right to be mentioned as such (62 MC; art. 14 LP) 14  3. Right to a patent A) What happens if the applicant of a patent is not the person having the right to a patent? Meaning that they’re not the inventor, nor the person to whom the inventor has transferred their right to a patent The answers are in art. 11 and 12 LP / art. 61 MC Art. 11 LP applies when the patent is not granted yet = art. 61 MC Art. 12 LP applies when the patent has already been granted 15  3. Right to a patent Art. 11 LP / art. 61 MC: If by a final decision it is adjudged that a person other than the applicant is entitled to the grant of the patent, that person may: prosecute the patent application as their own application in place of the applicant; file a new patent application in respect of the same invention; or request that the patent application be refused Art. 12 LP: If the patent has been granted to a person not legitimated to obtain it according to art. 10 LP (= right to a patent), the owner of the right to a patent has a civil action before the court in order to be recognized as such and to have the patent right transferred to them 16  3. Right to a patent B) Joint ownership (art. 10.2, 10.3 and 79 LP / art.59 and 60.2 MC) Art. 10.2 LP: several contributors to the invention à the right to a patent is granted to all of them (co-owners of the patent, if granted) Art. 59 MC: “A European patent application may also be filed either by joint applicants or by two or more applicants designating different Contracting States” ≠ if several people come up with the same invention independently (art. 10.3 LP; art. 60.2 MC): the patent right will be granted to the first applicant Once the patent is granted à rights of the co-owners (national law: art. 79 LP): Transfer their portion of the right (previous notification to co-owners since these have preference) Using the patent (giving notice to the co-owners) Taking legal action against those infringing upon the right Licenses must be granted by all co-owners 17  3. Right to a patent C) Employee’s inventions (art. 15 to 21 LP) This is another problematic field related to the right to a patent For European Patents: art. 60.1 MC “The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has the place of business to which the employee is attached” Spanish Law (also applicable for Spanish Patents): art. 15 to 21 LP Art. 15: entrepreneur’s invention Art. 16: employee’s invention Art. 17: inventions that can be assumed by the entrepreneur Art. 21: rules on inventions by civil servants (university researchers and other researchers) 18  3. Right to a patent Art. 15 LP: entrepreneur’s inventions inventions made by the employee during the performance of their contract, as a result of the research activity included in their contract à the invention belongs to the employer (entrepreneur) and the employee has no right to receive any extra remuneration of the invention Art. 16 LP: employee’s inventions if the requirements of art. 15 PL are not met, the invention belongs to the employee Art. 17 LP: inventions that can be assumed by the entrepreneur if the invention does not meet the requirements of art. 15 LP but the employee has used mainly the knowledge or the facilities of the company, the employer has the right to keep the invention or a right to use it à the employee has the right to a “fair compensation” Art. 21 LP: specific rules on inventions by civil servants (university researchers and other researchers) 19  4. Grant of a patent: Procedure Procedure for European patents: arts. 75 to 105c MC 1. Filling and requirements: arts. 75-89 MC Filling with the EPO (or national office if national Law so permits): art. 75 Requirements of the application: art. 78 a request for the grant of a European patent; a description of the invention; one or more claims (matter for which protection is sought; must be clear and concise and be supported by the description: art. 84) any drawings referred to in the description or the claims; an abstract (technical information only: art. 85) satisfy requirements laid down in the Implementing Regulations (mainly fees: for filling, search and designations à also renewal fees: art. 86) à related to the obligation of disclosure the invention: art. 83 Designation of contracting parties: art. 79 Designation of the inventor: art. 81 Declaration of priority: arts. 87-89 à date of priority considered date of filling patent application (art. 89) 20  4. Grant of a patent: Procedure Procedure for European patents (cont.): 2. Procedure up to grant: arts. 90-98 MC Formal examination: on filling and formal requirements (art. 90) European Search Report (art. 92): written using all documents available to the EPO which may be taken into consideration in deciding whether the invention is new and involves an inventive step; it may also contain an opinion on whether the application and the invention seem to meet the requirements of this Convention (extended European Search Report) Publication of the application (art. 93): deadline 18 months after date of filling or priority / before, if so requested by applicant Examination (art. 94): done on request: not considered to be filed until the examination fee has been paid; if no request is made, the application shall be deemed to be withdrawn content: whether the application and the invention meet the requirements of the Convention. If the examination reveals that the requirements of the Convention are not meet, the applicant is invited to file observations and/or amend the application Grant or refusal of the EP: art. 97 Publication of the grant (in the European Patent Bulletin): art. 98 21 22 23  4. Grant of a patent: Procedure Procedure for European patents (cont.): 3. Oposition and limitation procedure: arts. 99-105c MC Opposition (art. 99-101) 9 months after publication of the grant of the EP, by any person (art. 99) legal grounds (art. 100): subject-matter not patentable or extends beyond application, insufficient disclosure of the invention examination by the Opposition division of EPO (art. 101): with intervention of the parties à decision: to maintain (can be amended) or to revoke the EP publication of new specification of EP, if maintained but amended (art. 103) intervention of infringer (art. 104): opposition is possible after the 9-month period by a 3rd party that has been sued for infringement of the patent or has instituted proceedings claiming they don’t infringe the patent Limitation or revocation (arts. 105a, b and c): requested by the owner, examined by EPO, publication of amended specification Translation of the Epo (art. 65): any contracting party my ask the translation of the EP to its official language (if different from the one in the EPO proceedings) – costs à difference with UP which is only in 3 languages (English, French, German) 24 25  4. Grant of a patent: Procedure Spain: Art. 22 to 42 + art. 48 to 57 LP Application: art. 22 to 31 Procedure at the OEPM: art. 32 to 42 and 48 to 57 formal examination (art. 35 ex officio) Preliminary Report on prior art and Written opinion (art. 36) Substantive examination (art. 39: if requested, about patentability requirements) finishes with inscription at the Patent Registrar and publication of the patent at the BOPI (art. 41; also for applications: art. 79.1) Opposition and appeals: art. 43 to 44 within 6 months after publication of the patent, by any person grounds: lack of patentability requirements, unclear or uncompleted description, patent goes beyond the applied object 26  5. Patentee rights A) Effects of the patent (arts. 63 to 70 MC; arts. 58 to 69 LP): content of the right granted to the patentee protection for 20 years (art. 63.1 MC; art. 58 LP) Patent protection starts with the grant, however, dies a quo of the patent is the day of the application filing: Provisional protection from date of filling (art. 67): same as EP (art. 64) or same as application according to national Law Exceptional ex-post protection for certain patents: Supplementary protection certificate (SPC) certificate that gives the protection conferred by a patent (same rights) to an active ingredient or a combination of active ingredients which are found in a pharmaceutical or phytosanitary product after the patent has expired, for a maximum of 5 more years. It comes into effect when the patent expires. Reason: these products must obtain commercial authorisation before being placed on the market, which can reduce the effective term of the protection offered by the patent: SPC is intended to compensate for this reduction in the effective protection term. Council Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products Regulation (EU) 2019/933 of the European Parliament and of the Council of 20 May 2019 amending Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products 27  5. Patentee rights A) Effects of the patent (cont.): Content of the right: for European patents: “same rights as would be conferred by a national patent granted in that State” (art. 64.1 MC) Spanish Law: to impede anyone to exploit the patent without the owner’s authorization art. 59 LP: production, sales, use, import, possession (for products), use or offer to use (for processes) + specific acts for biotechnological inventions (art. 59.2, 59.3, 59.4 LP) à next slide includes also indirect exploitation (art. 60 LP): providing or offering to provide any means to use the invention Claims determine the extent of the protection (art. 69 MC) BUT courts use “doctrine of equivalents” (triple identity: function, way of implementation, result): legal rule in patent law whereby a party can be liable for infringement even though the party does not literally or precisely infringe every limitation of a patent claim (origin in US courts, adopted in other countries) à stops competitors who would introduce insignificant modifications into the claimed invention 28  5. Patentee rights A) Effects of the patent (cont.): Content of the right in Spanish Law (art. 59 LP): General: art. 59.1: La patente confiere a su ,tular el derecho a impedir a cualquier tercero que no cuente con su consen,miento: a) La fabricación, el ofrecimiento para la venta, la introducción en el comercio o la u,lización de un producto objeto de la patente o la importación o posesión del mismo para alguno de los fines mencionados. b) La u,lización de un procedimiento objeto de la patente o el ofrecimiento de dicha u,lización, cuando el tercero sabe, o las circunstancias hacen evidente que la u,lización del procedimiento está prohibida sin el consen,miento del ,tular de la patente. c) El ofrecimiento para la venta, la introducción en el comercio o la u,lización del producto directamente obtenido por el procedimiento objeto de la patente o la importación o posesión de dicho producto para alguno de los fines mencionados. 29  5. Patentee rights A) Effects of the patent (cont.): Content of the right in Spanish Law (art. 59 LP): Specific acts for biotechnological inven,ons: art. 59.2, 3, 4 2. Cuando la patente tenga por objeto una materia biológica que, por el hecho de la invención, posea propiedades determinadas, los derechos conferidos por la patente se extenderán a cualquier materia biológica obtenida a par,r de la materia biológica patentada por reproducción o mul,plicación, en forma idén,ca o diferenciada y que posea esas mismas propiedades. 3. Cuando la patente tenga por objeto un procedimiento que permita producir una materia biológica que, por el hecho de la invención, posea propiedades determinadas, los derechos conferidos por la patente se extenderán a la materia biológica directamente obtenida por el procedimiento patentado y a cualquier otra materia biológica obtenida a par,r de ella por reproducción o mul,plicación, en forma idén,ca o diferenciada, y que posea esas mismas propiedades. 4. Cuando la patente tenga por objeto un producto que contenga información gené,ca o que consista en información gené,ca, los derechos conferidos por la patente se extenderán, sin perjuicio de lo dispuesto en el apartado 5 del arvculo 5, a toda materia a la que se incorpore el producto y en la que se contenga y ejerza su función la información gené,ca. 30  5. Patentee rights B) Limits to the right: governed by naIonal laws Spain: general limits (art. 61.1 LP): private and non-commercial acts, experiments, studies and trials, etc. exhaus,on (art. 61.2 LP): “Los derechos conferidos por la patente no se ex,enden a los actos rela,vos a un producto protegido por ella después de que ese producto haya sido puesto en el comercio en el Espacio Económico Europeo por el ,tular de la patente o con su consen,miento a menos que existan mo,vos legí,mos que jus,fiquen que el ,tular de la patente se oponga a la comercialización ulterior del producto” The aim of this limit is to prevent the patent owner to control the subsequent process of commercializa,on of the goods: if not, the patent could be a way to restrict compe,,on (same concept as in trademarks) 31  5. Patentee rights C) Transfer and licensing (art. 71-74 MC; art. 82 to 89 LP) At EU level: minimum rules on the EP application (for patents, governed by national Law) General (art. 754 MC): the EP application as an object of property shall, in each designated Contracting State and with effect for such State, be subject to the law applicable in that State to national patent applications transfer possible and in written form (art. 71-72 MC) licences possible in whole or in part for the whole or part of the territories of the designated Contracting State (art. 73 MC) Patents: Spain (arts. 82-89 LP) Transfer: art. 82 Licences: next slide a) contractual licenses (art. 83 LP; ) b) “full right” licenses (art. 87 to 89 LP) c) compulsory licenses (art. 90 to 101 LP) 32  5. Patentee rights a) contractual licenses (art. 83 LP): can be exclusive or non-exclusive licensee cannot transfer the license or sub-license unless agreed so with the licensor unless otherwise agreed, licensee has all rights derived from the patent for all the time and all the territory in which it applies presumption of non-exclusivity à licensor’s right to grant other licenses and exploit the invention him/herself b) “full right” licenses (art. 87 to 89 LP): public offering of licenses by the owner, through the OEPM always non-exclusive owner gets a 50% reduction of fees c) compulsory licenses (art. 90 to 101 LP): linked to the obligation to exploit the patent (art. 90 LP: within 4 years after its application or 3 years after publication) types of compulsory licenses (reasons): art. 91 to 96 LP à lack or insufficient exploitation, patent dependence, public interest … procedure (art. 97 to 99 LP) and rules (art. 100 to 101 LP) 33  6. Nullity, revocation and expiration Governed by na,onal Laws: in Spain, Arts. 102 to 110 LP A) Nullity nullity grounds (possible par,al nullity): art. 102 LP lack of patentability requirements, unclear or uncompleted descrip,on, patent goes beyond the applied object extension of the patent protec,on owner of the patent did not have the right to obtain it (ex art. 10 LP) nullity ac,on: art. 103 LP public (except last case: legi,mate person to apply) available during the dura,on of the patent and 5 years ayer its revoca,on nullity ex tunc (patent never existed) 34  6. Nullity, revocation and expiration B) RevocaIon or limitaIon: art. 105 LP; art. 68 MC requested by the owner; same effects as total or par,al nullity C) ExpiraIon: art. 108 LP grounds: ,me expira,on, revoca,on, non-payments of fees, non-fulfilment of the obliga,on to exploit the patent D) RenunciaIon: art. 110 LP (wri`en form) 35  7. Infringement of patents AcIons (art. 64.3 MC; art. 70 to 81 LP) For European patents: art. 64.3 MC à “Any infringement of a European patent shall be dealt with by na,onal law” Spanish Law: Civil ac,ons in art. 71 LP cessa,on damages (art. 72 to 77: calcula,on of damages) seizure property a`ribu,on preliminary injunc,on judgment publica,on 36  8. UIlity models Art. 137 to 150 LP Inventions that confer on an object a form, structure or constitution that results in an appreciable improvement in its use or manufacture ≠ industrial models (design) that protect only the appearance (aesthetic) Requirements: novelty, inventive step and utility (art. 137 LP) universal novelty like for patents (art. 139 LP) Procedure (art. 141-147 LP) 37  8. UIlity models Content of the right: the same as patents but only for 10 years (art. 148 LP) Patent rules are applicable to utility models when there is no specific rule (art. 150 LP), expressly on right to a patent and inventor designation work inventions procedure and information to third parties nullity, revocation, limitation and expiration 38