Article 29 (4) of Law 17/2001 of 7 December on the obligation to designate a registered office in Spain for the purposes of notification to those who are parties to proceedings before the Spanish Office of Patents and Marks in which they act for themselves and do not have their registered office in Spain, has been declared by the European Commission incompatible with Article 49 of the Treaty on European Union, considering that its content constitutes a restriction on the freedom to provide services within the European Community. Therefore, it was urgently necessary to amend that paragraph by including the final provision of the sixth of Law 53/2007 of 28 December 2007 on the control of the external trade in defence and dual use material, giving a new wording to Article 29.4 of the Law to abolish the obligation to designate a registered office in Spain for the purposes of notifications. This entails, as a result, the amendment of Articles 1.1.c) and 56.1 and 3 of the Implementing Regulation of the Trade Marks Law, approved by Royal Decree 687/2002 of 12 July 2002, which are affected by the changes introduced in the This Law. In parallel, and for reasons of agreement, since Article 29 of the Law on Marks is applicable to all modes of industrial property, according to the second provision of Law 20/2003, of July 7, of Legal Protection Article 4 (1) (b) of the Implementing Regulation of the Patent Law and the second provision of the Regulation implementing the Law on the Law on the Legal Protection of Industrial Design have been amended to extend to patents and creations in the form of the same system of notifications provided for in the all cases where the address of the person concerned is outside Spain. In addition to the changes resulting from the aforementioned legal modification, the reform has been used to make other adjustments to specific issues, such as the determination of the deadlines for responding to the objections in the handling of cases of international trade marks, as provided for in Article 20 (2) of the Implementing Regulation of the Trade Marks Act, as well as in the representation to the Spanish Patent and Trademark Office. In order to speed up and adapt the accreditation of representation in cases of electronic processing, two new paragraphs are added to Article 57 of the said regulation of the Law on Marks, where it is anticipated that a file can be provided electronic copy containing the full copy of the original power for the acts which do not imply renunciation, alienation, lien or limitation of rights, without prejudice to the withdrawal of the application or for reasons of security, of trade or the original power must be provided within the time limits laid down in the new Article. Article 57 (7). The scheme is extended to the other forms of industrial property through the aforementioned amendment of the additional provision of the Regulation implementing the Law on Legal Protection of Industrial Design. They also regulate and systematize the assumptions of inadmissibility and withdrawal of the oppositions in the various legal procedures that contemplate them modifying to the effect the corresponding regulatory norms. In addition to the changes mentioned, others have been introduced in the Implementing Regulation of the Patent Law, which has practically remained unchanged since its approval in 1986, even though several of its precepts were repealed by the Law. 30/1992, of 26 November, of the Legal Regime of the Public Administrations and of the Common Administrative Procedure (LRJ-PAC) and Royal Decree 441/1994, of 11 March which approved the regulation of adaptation to the same procedures in industrial property. Among these changes is the express adaptation of Article 15 to the requirements of the aforementioned LRJ-PAC and, as a fundamental novelty, Article 29 of the Implementing Regulation of Law 11/1986 of 20 March of Patents, extending the content of the report on the state of the art, to include as part of it a written, preliminary and uncommitted opinion on the patentability of the invention. This last amendment concerning the improvement of the service provided with the implementation of the report on the state of the art aims to incorporate into our national system of grant of patents, within the policy of quality and taking as the most advanced systems of our environment, the model already generalized for all the patents that are requested for Spain by European way and for the search services offered by the Spanish Patent and Trademark Office as Authority in charge of the international search in the framework of the system established by the Treaty of Cooperation in the field of patents. Finally, in the Act of Review of the European Patent Convention of 29 November 2000, which entered into force on 13 December 2007, a new procedure for the limitation of centralised European patentas in the Office is introduced. European Patent and the Contracting States are permitted to require that, in order for a limited European patent under the new procedure to have effects in the country, the holder must submit a translation in the official language of the State within the period of three months from the date on which the mention of the limitation is published in the European Patent Bulletin. In the case of Spain it is the Spanish language for its status as a Member State of the Convention. To include this possibility, Articles 7 and 8 of Royal Decree 2424/1986 of 10 October 1986 on the application of the Convention on the Concession of European Patents made in Munich on 5 October 1973 have been amended. In the preparation of this royal decree the participation of the main associations and representatives of the affected sectors related to the content that is modified has been counted. This royal decree is dictated by Article 149.1.9. of the Constitution, which gives the State exclusive competence in matters of legislation on industrial property. In its virtue, on the proposal of the Minister of Industry, Tourism and Trade, after approval of the Minister of Public Administrations, in agreement with the Council of State and after deliberation of the Council of Ministers at its meeting on August 29 of 2008,

D I S P O N G O:

Article first. Amendment of the Regulation for the implementation of Law 11/1986 of 20 March of Patents, approved by Royal Decree 2245/1986 of 10 October.

The Regulation for the implementation of Law 11/1986, of 20 March, of Patents, approved by Royal Decree 2245/1986, of October 10, is worded in the following terms:

One. Article 4 (1) (b) shall be worded as follows:

" (b) Name and surname or social name of the applicant, his nationality and address. In the case of the name of legal persons, they shall be identified for their social reason or in accordance with the legal provisions governing them. Natural persons shall record the number of their identity card. In the case of foreigners, it will include your foreign identity number (NIE) or, failing that, that of your identity card or passport.

In the event that the applicant acts on its own and has no registered office or registered office in the territory of the Spanish State, it must designate, for the purposes of notifications, a postal address in Spain or, alternatively, indicate that the notifications are sent to him by e-mail or by any other technical means of communication available to the Spanish Patent and Trademark Office, without prejudice to the provisions of Article 155.2 of Law 11/1986 of 20 March, of Patents. "

Two. Article 14 (1) (b) shall be worded as follows:

"b) A description of the invention even if it does not meet the formal requirements laid down."

Three. Article 15 is worded as follows:

" Article 15.

1. Within 10 days of receipt of the application, the competent authority shall examine whether it meets the requirements necessary to obtain a filing date as required by Article 22 (1) of Law 11/1986, 20 of Article 14 of this regulation, and whether the application fee has been paid.

2. If it appears from that examination that the application does not meet the requirements necessary to obtain a filing date or that the application fee has not been paid, the defects observed shall be communicated to the applicant or his representative for the purposes of the application. subsane within one month, indicating that if it does not do so, it shall be given the withdrawal of its application. The decision to be withdrawn must be notified. 3. If the defects are corrected in time, it shall be granted as the date of filing that corresponds to the day in which the subsanatory documentation was presented in the competent organ to receive the application. However, if the defect consisted only of the non-payment of the fee and the fee is fully paid within the time limit, the date of initial filing of the patent application will not be changed. 4. In the event that the application is rejected the submitted documents will be returned to the applicant and the fee eventually paid will be refunded. "

Four. Article 29 (4) and (6) shall have the following

:

" 4. The report on the state of the art shall distinguish between those documents which have been published before the date of priority, between the date of priority and the date of submission and at the date of submission or subsequently. The report on the state of the art shall mention the classification of the patent application, according to the international classification. "

" 6. The report on the state of the art shall include a written, preliminary and uncommitted opinion on whether the invention covered by the patent application apparently complies with the patentability requirements laid down in the Act, and in particular, with reference to the results of the search, if the invention can be considered new, it involves inventive activity and is susceptible of industrial application. "

Five. Paragraph 3 is amended and two new paragraphs 4 and 5 are added to Article 45, with the following wording:

" 3. The opposition shall not be admissible where: (a) The statement of opposition has been filed outside the time limit.

b) The opposition rate would not have been paid. (c) The statement of opposition does not permit the identification of the application against which the opposition is formulated, the identity of the opponent or the grounds on which it is founded. (d) The power of representation in time has not been presented.

In the case provided for in paragraphs (b), (c) and (d), the opponent shall be given the opportunity to remedy the defects or to make representations within 10 days of the opposition if the opposition persists at the end of that period. period. 4. If the statement of opposition is not in accordance with the other provisions of this royal decree, the irregularities observed shall be notified to the opponent so that he may be subsane within one month, indicating that if he does not do so, he shall be by withdrawal of the opposition. The decision terminating the proceedings shall, in an express manner, take a decision on the circumstances which give rise to the withdrawal of the proceedings.

5. Once the time limit for the submission of objections has been completed, the applicant shall be transferred from those who have been admitted and are not withdrawn, with the time limit of two months to remedy the formal defects attributed to the applicant. request, to amend the claims if it considers it appropriate and to make any claims it considers relevant. '

Article 2. Amendment of Royal Decree 2424/1986 of 10 October 1986 on the application of the Convention on the granting of European patents made in Munich on 5 October 1973.

Royal Decree 2424/1986 of 10 October 1986 on the application of the Convention on the granting of European patents, made in Munich on 5 October 1973, is amended as follows:

One. Article 7 shall be worded as follows:

" When the European Patent Office grants a European patent designating Spain, the patent holder shall provide the Spanish Patent and Trademark Office with a translation into Spanish of the issue, as well as in the cases where the patent has been amended during the opposition procedure or limited by the European Patent Office. In the absence of translation, the patent will not produce effects in Spain. "

Two. Article 8 is worded as follows:

"The translation into Spanish of the text of the European patent shall be sent to the Spanish Patent and Trademark Office within three months from the date of publication in the" European Patent Bulletin " of the the granting of the patent, or, where appropriate, the mention of the decision relating to the opposition or the limitation.

A copy of the drawings appearing in the European patent issue must accompany the translation, even if it does not contain expressions to be translated. Likewise, when the holder has no registered office or registered office in Spain, it will be necessary for the translation of the text to be carried out by an Industrial Property Agent accredited to the Spanish Patent and Trademark Office or by a sworn interpreter. appointed by the Spanish Ministry of Foreign Affairs and Cooperation. "

Article 3. Amendment of Royal Decree 812/2000 of 19 May establishing the application of the procedure for granting prior examination for patent applications in the food sector.

Two new paragraphs 3 and 4 are added to Article 4 of Royal Decree 812/2000 of 19 May 2000 laying down the application of the concession procedure with prior examination for patent applications in the sector of the food, with the following wording:

" 3. The opposition shall not be admissible where: (a) The statement of opposition is not submitted within the time limit laid down in paragraph 1.

b) The opposition rate would not have been paid. (c) The statement of opposition does not permit the identification of the application against which the opposition is formulated, the identity of the opponent or the grounds on which it is founded. (d) The power of representation shall not be submitted in time.

In the cases provided for in paragraphs (b), (c) and (d), the opponent shall be given the opportunity to remedy the defects or to make representations within 10 days of the opposition if the opposition persists at the end of the period. 4. If the statement of opposition does not conform to the other provisions of this royal decree, the irregularities observed shall be notified to the opponent so that he may be subsane within one month, indicating that if he does not do so, he shall be by withdrawal of the opposition. The decision terminating the proceedings shall, in an express manner, take a decision on the circumstances which give rise to the withdrawal of the proceedings. '

Article 4. Amendment of the Regulation for the implementation of Law 17/2001, of 7 December, of Marks, approved by Royal Decree 687/2002 of 12 July 2002.

The Regulation for the implementation of Law 17/2001, of 7 December, of Marks, approved by Royal Decree 687/2002, of July 12, is amended in the following terms: One. Article 1 (1) (c) shall be read as follows:

" (c) Where the applicant acts on its own and has no registered office or registered office in the territory of the Spanish State, it shall, for the purposes of notifications, designate a postal address in Spain or, alternatively, indicate that the notifications are addressed to him by e-mail or by any other technical means of communication available to the Spanish Patent and Trademark Office, without prejudice to the provisions of Article 155.2 of Law 11/1986, March 20, Patents. "

Two. Article 19 is worded as follows:

" 1. The Spanish Patent and Trademark Office shall not accept the objection where: (a) The statement of opposition is not submitted within the time limit laid down in Article 17.1.

b) The opposition rate would not have been paid. (c) The statement of opposition does not permit unequivocally to identify the application against which the opposition is formulated, the identity of the opponent or the mark or the earlier right under which the opposition is presented. (d) The power of representation has not been submitted within the time limit laid down in Article 57.3.

2. If the statement of opposition does not comply with the other provisions of Law 17/2001 or of this Regulation, the Spanish Patent and Trademark Office shall notify the opponent of the irregularities so that, within ten days, they shall, indicating that if he does not do so, he will be given the opposition. The decision terminating the proceedings shall, in an express manner, take a decision on the circumstances which give rise to the withdrawal of the proceedings. '

Three. Article 20 (2) is worded as follows:

" 2. If the examination is carried out, it shall be that the application incurs, for all or part of the goods or services requested, in any prohibition or defect as provided for in Article 20.1 of Law 17/2001 of 7 December, or they have submitted objections or observations from third parties, and they have not been admitted or held for withdrawal in accordance with the provisions of the previous Article, the Spanish Patent and Trademark Office shall decree the suspension of the file and inform the applicant of the objections and objections or comments made to the applicant the period of one month, to count from the publication of the suspense in the 'Official Gazette of Industrial Property' ' present its arguments, answering the suspended suspense. For international trade marks, this period shall be between two and four months and shall be established by a decision of the Director of the Spanish Patent and Trademark Office, and shall be communicated to the International Bureau and published in the "Official Journal of Industrial Property". "

Four. Article 56 (1) and (3) are hereby worded as follows:

" 1. Except as provided in the following paragraph, no one shall be obliged to represent the Spanish Patent and Trademark Office or the competent bodies of the Autonomous Communities. However, where the person concerned is acting in his own right and has no registered office or registered office in the territory of the Spanish State, he must, for the purposes of notifications, designate a postal address in Spain or, alternatively, indicate that the notifications are sent to him by e-mail or by any other technical means of communication available to the Office. "

" 3. Natural or legal persons who have their registered office or an effective and serious industrial or commercial establishment in the European Community may act by means of an employee of the same, provided that this employee is accredited to the Spanish Office of Patents and trademarks or competent bodies of the Autonomous Community corresponding to their representation power and fulfil the conditions laid down in paragraph 1 for the purpose of notifications. The employee of a legal person referred to in this paragraph may also act on behalf of other legal persons who are economically associated with that person, even if these legal persons do not have or (i) domicile, no effective industrial or commercial establishment and serious business in the European Community. '

Five. Paragraphs 6 and 7 are added to Article 57 with the following wording:

" 6. In the case of applications, written or communications submitted electronically that do not imply renunciation, alienation, lien or limitation of rights may be provided, instead of the original power granted by the interested party, a file electronic containing the full copy of the same. However, the original document of the power must be submitted for inclusion in the file when it is totally removed from the application, when the Spanish Patent and Trademark Office so requires, or when any part of the procedure justify the possible existence of falsehood of the same or any other serious defect and expressly request it.

7. Where, in accordance with the preceding paragraph, the original power is to be submitted, the original power must be provided within 10 days of the Spanish Patent and Trademark Office or in which the Spanish Office of Patents and Marks is granted the time limit provided for in paragraph 1. 3 of this article, if this deadline was higher. Where the power is required in any of the formalities provided for in Articles 11, 14 or 20 of this Regulation, the contribution shall be made within the time limits laid down therein. Once the input of the original power is required, the non-compliance or its temporary contribution shall produce the effects provided for in paragraph 3 of this Article. '

Article 5. Amendment of the Implementing Regulation of Law 20/2003 of 7 July on Legal Protection of Industrial Design, approved by Royal Decree 1937/2004 of 27 September.

The Implementing Regulation of Law 20/2003 of 7 July on Legal Protection of Industrial Design, approved by Royal Decree 1937/2004 of 27 September, is amended as follows:

One. Article 1 (1) (c) shall be read as follows:

" (c) Where the person concerned acts on his own and has no registered office or registered office in the territory of the Spanish State, he must designate, for the purposes of notifications, a postal address in Spain or, alternatively, indicate the notifications are sent to him by e-mail or by any other technical means of communication available to the Spanish Patent and Trademark Office, without prejudice to the provisions of Article 155.2 of Law 11/1986, of 20 of March, of Patents. "

Two. Article 26 is worded as follows:

" 1. The opposition shall not be admissible where: (a) The statement of opposition is not submitted within the time limit laid down in Article 24 (1).

b) The opposition rate would not have been paid. (c) The statement of opposition does not permit an unambiguous identification of the design against which the opposition is formulated, the identity of the opponent or the grounds on which it is founded, or where none of the invocados is among those referred to in the article 33 of the Law. (d) The power of representation in time has not been presented.

2. In the cases referred to in paragraphs (b), (c) and (d) of the preceding paragraph, the opponent shall be given the opportunity to remedy the defects or to make representations within 10 days, with the opposition not being admitted if those persons persist at the end of the that period.

3. If the statement of opposition does not comply with the other requirements laid down in Article 25 (1), the Spanish Patent and Trademark Office shall notify the opponent of the irregularities observed so that, within a period of one month, the objections shall be If this does not do so, the opposition will be given up. The decision terminating the proceedings shall, in an express manner, take a decision on the circumstances which give rise to the withdrawal of the proceedings. '

Three. The additional second provision is worded as follows:

" Additional Disposition Second. Representation.

The rules contained in Article 56 of the Regulation for the Enforcement of Law 17/2001 of 7 December 2002, approved by Royal Decree 687/2002 of 12 July 2002, will apply to the representation of the interested parties. in any of the procedures and actions provided for in the rules governing the various forms of industrial property, as well as in other procedures for which the Spanish Patent and Trademark Office is responsible. The rules relating to the accreditation of representation referred to in Article 57 (1), (2), (4), (5) and (6) of that Regulation shall also apply to all forms of industrial property. "

Single transient arrangement. Arrangements applicable to procedures.

The procedures initiated before the date of entry into force of this royal decree will be governed by the previous regulations. By way of derogation from Article 29 of Royal Decree 2245/1986 of 10 October 1986, as amended in accordance with Article 1 (4) of this Standard, it shall apply to all patent applications for which the request for a report on the the state of the art is carried out after the entry into force of the technique.

Single repeal provision. Regulatory repeal.

The provisions of equal or lower rank that contradict or oppose the provisions of this royal decree are repealed.

Final disposition first. Competence title.

This royal decree is issued under the exclusive state competition law on industrial property law, as provided for in Article 149. 1.9. of the Constitution.

Final disposition second. Entry into force.

This royal decree will enter into force on the day following its publication in the "Official State Gazette".

Given in Palma de Mallorca, on August 29, 2008.

JOHN CARLOS R.

The Minister of Industry, Tourism and Trade, MIGUEL SEBASTIAN GASCON