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Protocol 8

on Spanish patents

1 . The Kingdom of Spain shall upon accession adjust its patent law so as to make it compatible with the principles of the free movement of goods and with the level of protection of industrial property attained in the Community , in particular in the fields of contractual licensing rules , of exclusive compulsory licensing , of the compulsory exploitation of a patent and also the patent of importation .

To that end , close cooperation shall be instituted between the Commission services and the Spanish authorities ; this cooperation shall also cover the problems of transition of current Spanish law towards new law .

2 . The Kingdom of Spain shall introduce , in its national legislation , a provision on shifting the burden of proof corresponding to Article 75 of the Luxembourg Convention of 15 December 1975 on the Community patent .

This provision shall apply upon accession with regard to new process patents filed as from the date of accession .

For patents filed prior to that date , this provision shall apply not later than 7 October 1992 .

However , this provision shall not apply if the infringement proceedings are brought against the holder of another process patent for the manufacture of a product identical to that obtained as the result of the patented process of the plaintiff , if that other patent was issued before the date of accession . Nevertheless , the Kingdom of Spain shall repeal from accession Article 273 of its law relating to patents , currently in force .

In cases where shifting the burden of proof does not apply , the Kingdom of Spain shall continue to require the patent holder to adduce proof of infringement . In all these cases the Kingdom of Spain shall however pass new legislation with effect from 7 October 1992 , introducing a judicial procedure known as " distraintdescription " .

" Distraint-description " means a procedure forming part of the system referred to in the preceding paragraphs by which any person entitled to bring an action for infringement may , after obtaining a Court order , granted on his application , cause a detailed description to be made , at the premises of the alleged infringer , by a bailiff assisted by experts , of the processes in question , in particular by photocopying technical documents , with or without actual distraint . This Court order may order the payment of a security , intended to grant damages to the alleged infringer in case of injury caused by the " distraint-description " .

3 . The Kingdom of Spain shall accede to the Munich Convention of 5 October 1973 on the European patent within the required time limits so as to allow it to invoke the provisions of Article 167 of the said Convention solely for chemical and pharmaceutical products .

In this context and taking account of the fulfilment of the undertaking entered into by the Kingdom of Spain under paragraph 1 , the Member States of the Community in their capacity as Contracting States to the Munich Convention undertake to use their best endeavours to ensure , should a request be submitted by the Kingdom of Spain in accordance with that Convention , an extension - beyond 7 October 1987 and for the maximum period laid down in the Munich Convention - of the validity of the reserve laid down in the said Article 167 . If the extension of the abovementioned reserve is not obtained , the Kingdom of Spain may rely upon Article 174 of the Munich Convention , it being understood that the Kingdom of Spain will , in any event , accede to that Convention not later than 7 October 1992 .

4 . On the expiry of the abovementioned derogation , the Kingdom of Spain shall accede to the Luxembourg Convention on the Community patent .

The Kingdom of Spain may invoke Article 95 ( 4 ) of the said Convention with a view to introducing the purely technical adaptations made necessary by its accession to the said Convention , it being however understood that such an invocation will in no way delay the accession of the Kingdom of Spain to the Luxembourg Convention beyond the abovementioned date .