New instruction on IET or Substantive Examination tax exemption or refund

Administrative proceedings simplification

As stated by the Spanish regulations (articles 36.5 and 183 of the Law 24/2015 on Patents and 45.3 of its Enforcement Regulation) and the international agreements (the Agreement between the WIPO and the SPTO that stipulates the features and conditions of the action of the SPTO as an International Searching and a Preliminary Examining Authority): if the SPTO has to make a searching or a substantive examination in the context of a patent or a utility model processing and there are previous works (referred to the same invention submitted by the same applicant or his successors) that can be used to simplify the task, the applicant may claim the total or partial refund of the specific taxes in those cases legally foreseen.

Despite the aforementioned articles gathered the cases where the state of the art report or the substantive examination issuance was not required during a patent processing, the regulation of the taxes refund that should be applied in each case was pending until the recent publication of the Instruction, of March 4th 2019, of the SPTO Director.

As a consequence of the application of this new Instruction, who submits a Spanish priority PCT application at the SPTO Recipient Office will see the administrative processing noticeably simplified (refund and grant). If the conditions detailed in the Instruction are met, the simple refund application of the international searching tax may entail the refund of the 100% of the tax amount without opening a grant proceeding. This simplification will mean a substantial benefit for the applicants, since the price of submitting a Spanish priority PCT application at the SPTO will be reduced from €3,000 (in round figures) to €1,300.