The grant procedure for a patent in Spain
To obtain a Spanish patent you must submit the corresponding patent application to the Spanish Patent and Trademark Office (OEPM). The documentation of the application includes a report that consists of a description of the invention, claims (which define the protection provided by the patent granted) and, where appropriate, some drawing to illustrate the invention.
Following the submission, the OEPM examines the patent application to determine if the documents are formally correct, if the object of the patent application is patentable and has an industrial application, and if the invention is clearly and overtly lacks novelty. In case there are any objections, the application is issued as pending, to give the applicant the opportunity to respond by presenting its claims and/or correct the identified defects.
Once the initial examination is passed, the so called state of the art search report must be requested. It is a mandatory report, drafted by the OEPM, considering millions of previous documents (patents from many countries in the world and other technical literature), so that the applicant can assess the novelty and the inventive step of the invention. The period for submitting this report is fifteen months from filing the patent application or one month from when the corresponding announcement of the initial examination is published in the Official Industrial Property Journal (a specialized publication of the OEPM that appears every two weeks), automatically applying whichever period expires last.
If the state-of-the-art report is requested in time, the OEPM shall draft and hand it over to the applicant. Additionally, an announcement of the state-of-the-art report is published, informing that it is now available to the public. Similarly, the patent application shall be published in, theoretically, eighteen months from the date of submission.
From this moment, the applicant has the option to choose, within three months, one of the following two procedures:
The general grant procedure
In this procedure, a notice is published whereby third parties may submit comments to the state-of-the-art report in a period of two months. Subsequently, whether or not third parties have made observations, the applicant has an additional two months to submit their observations, and, if necessary, modify the claims. Finally, whether or not there are observations from third parties or the applicant, or if the claims have been modified or not, the patent is granted.
The procedure with preliminary examination
In this procedure, a notice is published from which third parties have a period of two months to file any oppositions (note that they must be real oppositions, those that can lead to the rejection of the application, and not just mere observations; observations do not prevent the granting of the patent).
Then, the OEPM examiner will make a proper examination of the novelty and the inventive step of the invention, and shall notify the applicant with the oppositions which could have been submitted in its case. A communication phase now begins between the applicant and OEPM, in which the applicant has the opportunity to modify the claims to overcome existing objections against the patent application, which, eventually, is granted or denied in whole or in part.
Once the patent is granted, it is necessary to pay the corresponding grant rights and, every year, the so-called annuities or maintenance fees in force during the life time of the patent (which is twenty years from the filing date of the patent application). Annuities are initially low amounts, but they will increase in geometric progression.
The general grant procedure lasts, according to the Law of Patents, fourteen months from the publication of the patent application. The procedure with examination lasts twenty-four months from the publication. It is possible, however, to obtain swift processing of the application at the time of filing, which implies certain requirements, but accelerates the procedure.
This article is not considered as legal advice