The grant procedure

The 2015 Patent Act establishes a single procedure for the granting of patents: with a "State of the Art Report" followed by a "Preliminary Examination". Subsequently, a new procedure for objection to the grant of the patent is commenced. However, as has already been pointed out, the procedure does not guarantee the validity of the patent –a matter which, if debated, must be resolved in the Courts– despite the publication of the State of the Art Report, accompanied by a written opinion, which will indicate the existing background that may affect the novelty and the inventive step of the invention.

For Utility Models, the 2015 Patent Act establishes a single grant procedure with a call for objections prior to the grant.

Stages of the grant procedure

Granting of date for submission and admission for consideration.

The date for submission of the application is granted when the following documentation is submitted:

  • An express or implied indication that the components are intended to constitute a patent application
  • Indications to establish the identity of the applicant or to allow the office to contact the applicant
  • A party that, prima facie, appears to constitute a description presented in any language

In order to obtain a submission date, a reference to a previously submitted application will replace the description and any drawings. Said reference must be made in Spanish, when submitting the application. In addition, a copy and, where appropriate, translation into Spanish of the previous application must be provided.

Within ten days of receipt of the patent application by the SPTO, it is assessed whether it meets the requirements for a submission date. If this is the case, the submission date will be the initial date on which the application was submitted. If, on the other hand, there are deficiencies, they are notified to the applicant, and the applicant is granted a period of two months to rectify them. If they fail to do so, the application will be deemed to have been withdrawn. If they rectify the defects detected, the submission date is modified, becoming the date on which they submitted the new documentation.

When the description is drafted in a language other than Spanish, the applicant must provide a translation into Spanish that can be submitted within two months of the filing of the application or within two months of the date on which the SPTO issues the request for it to be provided during the ex officio examination, the later deadline applying.

At the same time as the requirements for obtaining a submission date are examined, it is checked whether the filing fee and the application fee for the state of the art report have been paid. In the event that the fees have not been paid or have been insufficiently paid, the applicant will be required to make the corresponding payment within one month. Otherwise, the patent application will be deemed to have been withdrawn, but the applicant will not lose the submission date granted.

Ex officio examination of the application

Once the submission date has been granted, the application shall be examined ex officio in accordance with the formal requirements established in the Law and its implementing regulations. If there are any defects, the SPTO informs the applicant so that they can address them within two months. If the applicant does not do so the patent is rejected.

Drafting of the SAR and the written opinion.

Since the fee for the state of the art report is paid at the outset, the SPTO can proceed almost immediately. However, if the lack of clarity or coherence prevents the preparation of the report in whole or in part, the applicant will be notified to remedy any defects within two months, present any submissions that they deem appropriate or specify the purpose of the research; otherwise, the patent will be rejected. Once the SAR has been completed, the applicant will be given the report indicating how they can access all the documents cited therein. The report is accompanied by a written, preliminary non-binding opinion as to whether the invention which is the object of the application complies with the patentability requirements and, in particular, whether with respect to the search results, the invention appears to be new, inventive and have industrial applicability.

Publication of the application and the SAR.

After eighteen months from the submission date (or priority date, if any), the SPTO makes the patent application available to the public, making the corresponding announcement in the Industrial Property Official Bulletin (BOPI) and, simultaneously, publishing a brochure containing the full content of the patent application together with the SAR. The written opinion shall be made available to the public.

Third-party observations

From the publication of the patent application and up to the time prior to the completion of the substantive examination, any person may make duly reasoned and documented observations on the patentability of the invention. The observations are notified to the applicant, who can present any submissions they deem appropriate. It must be pointed out that the observations do not interrupt the processing of the application.

Application for the substantive examination

The request for the substantive examination may be submitted from the time of the filing of the application and up to three months after the publication of the state of the art report. The request will not be considered until the payment of the examination fee has been made. In the event that the request and payment are not made within the prescribed period the patent application will be considered to have been withdrawn.

Until the period for requesting the substantive examination has elapsed, the applicant may submit a new set of amended claims in order to avoid any objections to the lack of novelty and inventive step, which can be deduced from the SAR and the written opinion. It should be noted that such modification cannot refer to elements that have not been researched and that it cannot involve an extension of the content of the application.

Substantive examination and resolution.

After the deadline for requesting the substantive examination, the SPTO initiates it. If the examination does not result in the absence of any requirement, the requested patent will be granted.

In the event that there are reasons that impede the granting of the patent in whole or in part, they are notified to the applicant so that within two months the applicant can address the objections or, if they deem it appropriate, modify the claims. If the applicant does not take any action to counteract the objections, the patent will be rejected. Other cases will be resolved by the SPTO once the applicant's reply has been received.

However, if in spite of the submissions or modifications made by the applicant, the SPTO considers that there are still grounds for granting the patent in whole or in part, they are communicated to the applicant, and the applicant is given new deadlines of two months to rectify their application or to present submissions.  Subsequently, the SPTO must definitively resolve on the granting or reject of the patent.

In the event that the patent is granted, the granting will be published in the Industrial Property Official Bulletin and a brochure will be issued with the patent as it has been granted. The announcement of the granting in the Industrial Property Official Bulletin will include mention of the fact that it has been carried out with a substantive examination of the novelty and the inventive step of the invention that constitutes its object.

It should also be borne in mind that, for a patent to remain in force, up to twenty years from the submission date, which is the temporary duration of the monopoly, the holder must pay annual maintenance fees.

Objection procedure

Within six months of the publication of the grant, any person may object to the grant. The objection must be reasoned, accompanied by the corresponding evidentiary documents, and involves the payment of the objection fee. The grounds for objection may be:

  • a) The claimed invention does not meet any of the patentability requirements.
  • b) Its description is not sufficiently clear or complete for an expert in the matter to be able to implement it.
  • c) The object of the granted patent exceeds the content of the application as submitted.

Once the objection document has been accepted, the patent holder is informed to present, within a period of three months, their submissions and modify their claims, if they deem it appropriate. The SPTO notifies each objector of the submissions and proposals for modification presented by the holder, granting them a two-month reply period.

Once the reply has been received by the objectors, the SPTO must decide, upholding in whole or in part the objections presented when any of the grounds for objection arise, or otherwise reject them. However, where in spite of the modifications made or submissions presented by the holder, there remain reasons that prevent the maintenance of the patent in whole or in part, the holder shall be granted at least one new period of one month to remedy the defect or present new submissions before deciding definitively on the objection raised.

Following the procedure, the SPTO may decide to revoke the patent, maintaining the granting of the patent or maintaining the granting of the patent but in a modified form.