June 19, 2019

First Oral Hearing in the context of the Spanish patent examination procedure

Recently, the first Oral Hearing case of a Spanish patent applicant has been held in the context of a mandatory substantive patent examination procedure.

Oral Hearings in patent matters are formal proceedings that are held, at the request of one of the interested parties, in the procedure for granting patents (or in the opposition procedure), in which a Commission of the Spanish Patent and Trademark Office (hereinafter, SPTO), in the presence of the parties, deliberates on the granting, refusal or modification of a patent application in the substantive examination phase; or on the revocation, limitation or maintenance of a patent already granted, in  opposition procedures. It is a matter of concentrating in a single act all those aspects that may subsequently be relevant for the resolution of the file.

The patent examination procedure, regulated by the Royal Decree 316/2017 approving the Regulation for the implementation of the new Spanish Patent Law 24/2015 and in particular its Article 34 establishes that if the SPTO considers that there are still reasons during the substantive examination phase that prevent the grant of the patent in whole or in part, it shall communicate them to the applicant, giving him the opportunity to make observations or corrections on the application. Once received, the SPTO may repeat the objections notification and give new opportunities to the applicant to correct the application. According to Article 34.7 of the Implementing Regulations of the Spanish Patent Act, these opportunities may consist in one or several written formalities, or be replaced by a single Oral Hearing requested either by the applicant or the SPTO when it deems it appropriate. The Oral Hearing in the substantive examination phase is not public.

For the time being, it is a novelty that the applicant of a Spanish patent resorts to this Oral Hearing procedure in the substantive examination phase. If we refer to the European Patent Office, which has a much longer trajectory in this field, only 3% of the examination procedures conclude in Oral Hearing, while in opposition procedures 70% of the cases do so.

Given the great complexity of the organisation and holding of Oral Hearings, the first ones are undoubtedly a great challenge for the SPTO. At the same time, it seems reasonable to predict that, in certain cases, this approach may help an applicant to resolve in a satisfactory and expeditious manner the preliminary objections, cited by the Examiner in charge of the case, that initially prevented the patent granting.

In short, the incorporation in the new patent law of the Oral Hearings within the procedure of Substantive Examination of Spanish Patent applications provides an additional tool, which will very probably result in a better quality procedure.


Article by Diana Mariné.