How to File a Utility Model Application in Spain: Requirements and Procedures
Understanding the Utility Model Application Process in Spain
The utility model is a vital feature of Spain's intellectual property system, offering expedited protection for innovations that may not meet the inventive step required for patents. With changes in eligibility and procedures over recent years, understanding the application requirements, deadlines, and examination protocols is crucial for successful registration. This article outlines the vital steps and considerations for filing a utility model application in Spain.
Authority：
- Spanish Patent and Trademark Office (SPTO), www.oepm.es
Term of Protection:
- 10 years (Since April 1, 2017, compounds can also be filed as utility models.)
Filing Deadlines:
• Paris Convention Invention/Utility Model: 12 months from the earliest priority date (non-restorable)
• PCT Invention/Utility Model: 30 months from the earliest priority date (non-restorable)
Required Documents :
- Specification
- Claims
- Drawings
- Abstract
- Abstract drawings
- Statement of ownership / Employment certificate / Priority Assignment (if any)
Language Requirements:
All technical documentation, such as specifications, claims, drawings, and abstracts, must be submitted in Spanish.
Process & Procedure:
After receiving the patent application, the SPTO will carry out a formal examination within 10 days to verify whether the application meets the requirements for granting a filing date and whether the applicant has paid the filing fee. If correction is required, the applicant must respond within 1–2 months. The utility model application will be granted after all requirements are met.
Opposition Procedure:
Once a utility model is granted, an opposition period follows:
- Opposition Timing: Opposition must be filed within 2 months from the grant.
- Applicant Response: Upon opposition, applicants may amend the application within 2 months.
- Decision and Appeals: Decisions of grant or rejection are published in the BOPI, with a subsequent 1-month window for filing appeals.
Grace Period for Novelty:
- A grace period exists wherein public disclosures occurring within 6 months prior to the filing do not affect the novelty of the utility model. This offers a limited safety net for early disclosures.
Grant and Annual Fees:
- Utility models in Spain do not incur a separate grant fee. The filing fee includes annuities for the first two years. From the third year, annual fees must be paid:
- Due Date: Annually, on the last day of the filing month.
- Grace Period**: A 3-month window without surcharges is allowed post-due date.
- Surcharge Periods: Two additional 3-month phases exist, with a 25% surcharge for the first and a 50% surcharge for the second.
- For example: For a filing date of June 14, 2022, the due date for all annual fees aligns with June 30 each subsequent year, with the 3rd annuity being due on June 30, 2024.
- Fee reductions are available for applications filed after April 1, 2017:
- Entrepreneurial Reductions: A 50% reduction on the 3rd to 5th year annuities is available.
- Public Universities: Eligible for a 50% reduction on all annuities or full exemption provided they satisfy economic use conditions as stipulated in Article 90.2.
- Pre-2017 Applications: Continued annuity exemptions apply for those filed by public universities, including divisional or converted registrations.
Conclusion
Navigating the utility model application process in Spain requires diligence in documentation, adherence to strict deadlines, and an understanding of the potential financial obligations. The SPTO facilitates this procedure, ensuring protection for innovations within a reasonable timeframe. For businesses and IP professionals, understanding these requirements effectively expedites the registration process and maximizes the benefits of utility model protection.