Spain’s UPC language barrier

The unitary patent is legally and technically ready, the European Patent Office (EPO) announced shortly before Christmas. What is still needed are the signatures of both the UK and Germany, as well as at least two other EU member states, to ratify the Unified Patent Court (UPC) Agreement before it finally takes effect. The fee structure has been finalised and the creation of the IT system to administer the electronic filing system is soon to be completed. After many years of waiting, the UPC is nearly ready to go.

One state that will not be joining the party is Spain. Last year, the Court of Justice of the European Union (CJEU) ended the country’s legal challenge to the UPC Agreement. The point of contention is the exclusion of Spanish as an official language of the UPC, which Spain has described as discriminatory; the official languages are English, French and German. That challenge was the final legal hurdle for the UPC.

The benefits of the unitary patent are clear to many: filing just one application covering 26 European countries and litigating in a single forum with wide jurisdiction. Despite this, the director general of the Spanish Patent and Trademark Office (OEPM), Patricia Garcia-Escudero, believes her government has made the correct decision in not participating.

“Spanish is one of the most spoken languages in the world, and it is widely used on the internet. So we wanted them to consider Spanish as an official language of the UPC,” she says.

“During the negotiations, one of our proposals was either to include the Spanish language or to have just one official language: English. They didn’t approve either offer, so we stayed out.”

Spain’s omission from the UPC is a concern for many stakeholders. As Spain is the fifth biggest economy and fifth most populous country in the EU, many will be disappointed that the court and associated unitary patent are not extending to the country.

Until the CJEU handed down its decision, the UPC Agreement had two powerful opposing parties: Italy was also frustrated that Italian was not included as an official language within the new setup.

However, Italy has since reversed its position. Last year EPO president Benoît Battistelli welcomed Italy’s decision to join the unitary patent, stating it would increase the “attractiveness” of the patent. Simona Vicari, Italy’s under-secretary of state to the Ministry of Economic Development, said it would provide an “additional tool” for protecting intellectual property rights.

But Garcia-Escudero stands firmly by the side of the Spanish government in refusing to accept the rules as they are. She says the decision not to participate will force member states to “reflect on the importance of the Spanish language and technology”.

Her protest stems from her belief that Spanish small to medium-sized enterprises (SMEs) will be disadvantaged by the exclusion of the Spanish language.

“Spanish SMEs will have fewer rights than an English, French or German company because of the language barrier,” she says. “We are always defending the rights of Spanish SMEs—which make up 99% of Spain’s economy.”

With the advent of the unitary patent, is she concerned about any drop in interest in Spanish patent applications? “No, I think that industries will continue to apply for protection in Spain, regardless of the UPC’s existence,” she says.

National patent law changes

Spain has continued with work on updating its patent laws to meet international standards. Proposed changes were first published in July 2015 and are due to take effect in 2017. Key amendments include the streamlining of the application procedure, the approval of second medical use patents, and the power to partially invalidate a patent.

Garcia-Escudero has already begun focusing on implementing the changes. She describes introducing such amendments as the biggest challenge facing the office.

Currently, Spain has two patent examination procedures. Applicants can choose to follow the general procedure, where there is no substantive examination of novelty or inventive step before the patent is granted. Alternatively, there is a special procedure, which requires a substantive examination of whether the patent is eligible for protection. The latest change streamlines the two processes into one procedure requiring substantive examination.

"One of our proposals was either to include the Spanish language or to have just one official language: English. They didn’t approve either offer, so we stayed out.”

“Under the old law, only about 10% of patent applications were opting to use the substantive examination procedure because they thought the other procedure was quicker,” Garcia-Escudero says.

Despite the extra work, she welcomes the changes to Spain’s patent laws, believing them to be necessary to ensure Spain keeps up with developments in IP laws across the world.

“We think it is important to issue strong patents and meet the requirements of international treaties in order to grant European patents or patents under the Patent Cooperation Treaty (PCT). It is important to be in accordance with them.

“For a long time, Spain has been a PCT search and examination authority. Because we grant patents under the high PCT standard for international patents, we have to apply the same standards for national patents,” she adds.

One part of the new legislation that Garcia-Escudero is particularly happy about is the slashing of patent application fees by 50% for SMEs. Although in the past the office granted various subsidies to SMEs, the latest amendment means a reduction across the board.

She says this will “encourage small companies to file for patents” and that it is part of a wider plan to “raise awareness of the importance of obtaining IP rights”.

Overall, the changes to the patent law are welcomed by many stakeholders. Garcia-Escudero speaks of a “consensus” in various industries “about the need for changing the law”.

“This is a law that complies with the needs of all industries. It doesn’t just benefit big companies, but SMEs as well.”

The law is the result of a consultation conducted by the IP office and government with stakeholders and various industries.

New-look EU trademark system

On Christmas Eve, Regulation (EU) 2015/2424 outlining Europe’s new trademark laws was published. It has been many years in the making and trademark lawyers across Europe have been patient as politicians negotiated a new plan.

The real work for Garcia-Escudero begins now in implementing some of the changes.

“Our law is largely coordinated with the trademark regulation; there are not many changes. The most important changes concern introducing administrative procedures,” she says.

The OEPM will require opposition parties to demonstrate proof-of-use of their own mark when filing a challenge to a trademark application. Previously, demonstrating use was not compulsory.

Furthermore, it will be mandatory for the OEPM to assess invalidation challenges and revocation of marks on non-use grounds. Dealing with such requests will require changes within the office’s internal organisation.

“Intellectual property is always changing,” she says. “To stay updated it is important that we always review existing law and make changes to reflect the needs of users.”

Over the last few years, the OEPM has reported a drop in the number of patent applications filed at the office. In 2012, 3,361 applications were filed, but there was a 6.8% drop the following year to 3,133; this figure dropped by 3.3% to 3,031 in 2014.

It is a worrying trend for the OEPM, but Garcia-Escudero puts these figures into the context of Spain’s economic woes in the last few years. In 2011, the country’s economy began retracting and did not return to growth until 2014, which perhaps explains why applications fell in that period. She notes that when GDP drops, so does the number of patent applications.

For IP owners in Europe, 2016 is set to be a big year. The EU trademark regulation takes effect in March, the introduction of the unitary patent will get closer, and the OEPM will start implementing the key changes of the updated patent law. Harmonisation is a key IP trend, and patent and trademark owners stand to benefit from increasingly integrated IP laws across the EU.

Despite this, there is no indication from Spain that it will change its stance and participate in the unitary patent. Garcia-Escudero is confident that this is the correct decision, much to the dismay of many right owners which would like to see the unitary patent cover Spain.

While it is easy to be consumed by these big questions, Garcia-Escudero maintains her focus on helping the little guy; her determination to promote the importance of IP rights among SMEs is a priority. She also works with the EPO on raising IP awareness, especially among SMEs.

She notes it is difficult to maintain awareness of the importance of IP protection among the general public, but no matter how difficult the challenge, she insists it is the “correct line”.

“We have opened the path and it is just about continuing the work.”