At present, domestic patent applicants who wish to accelerate the processing of their application with the Spanish Patent and Trademark Office (SPTO) have a variety of mechanisms at their disposal, in accordance with the current legislation.
The first is based on Law 30/1992, dated 26 November, on the Legal Scheme for the Public Administrations and Common Administrative Procedure, by virtue of which, based on article 74.2, applicants may request urgent processing of their application, which does not normally cover the entire procedure, rather one particular formality (advanced publication, drafting of the State of the Art Report, issuing certified copies, etc.) The drawback of this system is that both the urgent request and the order to be passed by the head of the administrative unit for its application have to be reasoned.
A second accelerated processing mechanism that affects only the preparation of the State of the Art Report (the most important part of the general grant procedure for a patent) is to use the PCT (Patent Co-operation Treaty) route directly. This method enables applicants to present their application directly as a PCT application, designating Spain and, in this case, obtain the International Search Report (equivalent to the State of the Art Report), no later than nine months after the application is submitted. If a domestic application is presented first and then a PCT application is submitted, the report is issued three months after presenting the PCT application. The inconvenience of this second system is that the applicants must use a channel that they might not have wanted to use initially and, furthermore, they must pay the international fees and international search fees, which are much greater than those for a domestic application for the same concepts.
Patents Act 11/1986 also offers an additional system for obtaining the patents in a shorter period of time than in the ordinary case, which may normally be under a year if you choose to forego the preliminary examination. Its application depends on certain commitments by the applicant: requesting early publication, paying the State of the Art Report initially and ensuring that the application is free of formal defects that would lead to a suspension of the procedure, with the subsequent delays.
The principle on which this type of administrative action is based is the same as for the European Patent Office's PACE Programme, which, without modifying any rule in the Agreement, offers European patent applicants an accelerated processing system that shortens the average processing times considerably.
This instruction covers this system, the requirements for its application and the internal measures to be adopted by the Spanish Patent and Trademark Office.
By virtue thereof, I hereby issue this instruction:
1) Application submission
Once the application has been submitted, the SPTO will verify that the applicant, along with the documentation submitted, has completed the following actions:
2) Assignment of the submission date and examination of the application for its possible national defence interest
The Spanish Patent and Trademark Office will carry out the submission date assignment and the national defence examination jointly within the period of time established in article 4 of Royal Decree 441/1994; that is, 10 days from its submission.
3) Examination of formalities and patentability
Accelerated processing requires that the application be free of defects or irregularities. Therefore, if, as a result of the formality and patentability examination, established in article 31 of Law 11/1986, the Patent Act, the application process is suspended, said application will be excluded automatically from the programme and will continue under the normal procedure.
When the application is free of defects and, therefore, is not suspended, the applicant need not be notified directly of the continuation of the procedure, as the applicant is considered to have requested this beforehand by requesting the accelerated grant programme. In this case, the continuation of the procedure will be published in the Official Industrial Property Gazette as soon as possible, but never prior to the end of the two-month period in 14.1 b) of the Patent Act Regulations, during which the applicant is allowed to complete the description.
4) Preparation of the State of the Art Report
The State of the Art Report will be drawn up as soon as possible after the formalities and patentability examination.
5) Publication of the application and of the State of the Art Report.
Once the Report has been drawn up, it is sent to the applicant. The patent application and the Report will be published as soon as possible in the Official Industrial Property Gazette, thus opening the legally established period during which the applicant requests the resumption of the procedure and exercises the legally established options: the general patent grant procedure or granting with preliminary examination.
6) Granting the patent
When the applicant chooses the general grant procedure without preliminary examination, once the third-party comments and applicant reply and application modification procedures have been carried out within the deadlines established in article 30 of the Patents Act Regulations, the Spanish Patent and Trademark Office will make a decision on granting the patent as soon as possible.
