We draft patent specifications, utility model specifications, addition certificate specifications, etc. according to the regulations in Europe or the USA and for inventions belonging to a wide range of technical fields (electromechanical, biotechnological, telecommunications, etc.). We work in both English and Spanish.
The specification is a document consisting of a description, a set of claims, an abstract and drawings, if appropriate. It is a document of vital importance as it defines the scope of the patent protection. Its correct drafting is extremely relevant for three essential reasons: (1) the specification must define the appropriate and interesting protection, (2) the patent has a maximum legal life of 20 years, and the specification must be able to “resist” these 20 years without becoming obsolete, (3) generally speaking, the specification may not be modified (particularly, extended) from the moment the application is filed (if amendments are made, the consequences may range from a delay in the patent presentation date to the nullity of the patent).
During the preparation of the specification, our technical team keeps a constant and direct contact with the inventors in order to draft a thorough and correct specification.
We prosecute patents in any country or patent office in the world (see Scope of Registration). In the case of Spanish Patents and Utility Models, European Patents (EPO) and International Patent Applications (PCT), we prosecute the application directly at the corresponding IP Office. In the case of national patents in foreign countries, we prosecute the application via our network of foreign agents.
Procesution includes filing the application, requesting the search report, requesting the technical examination of the application, analyzing the prior art, replying to the technical examination, replying to any observations or oppositions raised by third parties and, finally, paying the grant fees and collecting the official certificate. We constantly control the deadlines of all the different actions required during prosecution, in accordance with the applicable regulations.
We monitor the official publications of the patent offices, to inform our clients about Patent applications which may conflict with their interests. We prepare oppositions to the granting of patents to third parties.
We maintain patents or other registrations in force, controlling the payment due dates, informing the client of the need to pay annuities or maintenance fees, and making payments at the corresponding patent office.
We carry out patent searches by applicant/proprietor, field of the invention, key words, inventor, etc. to identify the prior art in a certain area, to locate a specific patent, to locate the patents in the name of a company, etc.
We prepare patentability reports for technical designs, analyzing the novelty and inventive step of the designs when compared with prior art.
Infringement Risk Reports
We prepare infringement risk reports, to determine whether a particular technical design infringes any patents. We also analyse the possibility of requesting the nullity of a third party patent in court. Nullity is generally due to a lack of novelty or inventive step, not detected during patent prosecution.
We provide legal advice on judicial and extrajudicial actions, including the processing of summons, drawing up of licensing contracts, evaluation of Industrial Property assets, etc. We work with a team of lawyers with extensive experience in patent matters, for lawsuit filing or for defending our clients’ interests in lawsuits initiated by third parties.
TYPE OF REGISTRATION
A patent protects inventions (technical creations) for a maximum period of 20 years, granting the patentee the right to prevent third parties from exploiting the invention without his/her consent. Any technical design from any technological field, referring to a product, procedure, chemical compound, application, device, etc. (with some exceptions) may be registered as a patent, provided that the requirements of worldwide novelty, inventive step and industrial applicability are fulfilled.
A utility model protects inventions (technical creations) for a maximum period of 10 years, granting the patentee the right to prevent third parties from exploiting the invention without his/her consent. Only shapes or configurations given to an object to obtain a certain practical result or utility may be registered as a utility model. Utility models generally require a lesser inventive step and solely national novelty.
The addition certificate is a type of protection that links an invention to a previous patent, the invention referring to modifications or improvements of the previous patent that by themselves do not justify a new patent.
The addition certificate is subjected to the same prosecution as a patent, but once granted does not pay annual fees (which will only be paid for the previous patent).
The certificate of complementary protection is a mechanism provided by Industrial Property legislation which allows the legal life of certain types of patents (medicines and phytosanitary products) to be extended up to a maximum of 5 years. In this way, a certificate of complementary protection may counteract the fact that the products protected by these types of patent usually require official authorization for their sale, and this is usually delayed for a good part of the legal life of the patent, hence making a return on the investment difficult.
Spanish patent and utility model applications are filed at the Spanish Patent and Trademark Office (OEPM). Protection is granted throughout the Spanish territory.
European Patent applications are filed at the European Patent Office (EPO), specifying in the application the desired countries from the 32 countries party to the European Patent Convention (Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Hungry, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxemburg, Latvia, Monaco, Malta, Holland, Poland, Portugal, Rumania, Sweden, Slovenia, Slovakia, Turkey). Once approved, the European Patent be turned into a series of national patents in order to obtain the effective rights in the desired countries.
International patent applications by virtue of the Patent Cooperation Treaty (PCT) are filed at the International Office of the World Intellectual Property Organization (WIPO). This allows the patent application process to be initiated at a fixed price, in more than 100 countries party to the PCT Treaty. The PCT Application offers the applicant two key advantages: on one hand, a single International Search Report is obtained, with cost savings compared to processing national patents independently , or in other words, without being preceded by an international patent application PCT; furthermore, the international patent application PCT allows processing in the countries to be delayed for up to 30 months (and therefore delay the decision regarding which countries to apply for the patent, and the associated costs).
Applications are filed at the corresponding Patent Office in each country. Registration is required in each country in which exclusive rights (industrial property rights) are wished to be obtained.
Note: Not all countries offer the Utility Model type of registration.