Good news for forgetful applicants in Spain

Spanish Patent and Trademark Office
By Ricardo Ricote
(Via Flickr)

Article 33.3 of the Spanish Patent Act is very clear. If you do not request the search report in the 15 months following the patent application, it will be deemed to be withdrawn.

However in a breakthrough decision the Madrid High Court has now ordered the Spanish PTO to resume prosecution of a patent application which protects an innovative test for detecting the presence of certain viruses in the body. The applicant argued that Article 76.3 of the Administrative Procedure Act, which governs all applications to government offices, should prevail as it was passed by Parliament four years after the 1986 Patent Act. The Administrative Procedure Act treats the citizen much more benevolently, allowing him to remedy the defect even though the time limit for doing so has expired. In fact, he can remedy it at any time up to and including the day the public office notifies him of the expiration of the time limit. In the case of the search report, this will be the day on which the withdrawal of the application is published in the Official Gazette of the SPTO. The applicant may request the search report and pay the fee that same day.

This judgment (no. 77/2014 of 29 January 2014 in appeal no. 458/2011) breaks with the practice of the Spanish PTO. It has enormous implications as the same reasoning is applicable to any occasion on which an applicant for a patent, trademark or industrial design fails to comply with a step in the procedure, for instance if he forgets to pay the annuity fee.  

Author:Colm Ahern

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