The Industrial Property system in Spain includes, as part of its legal safeguards, the figure of reinstatement of rights.
This mechanism is essential to protect the legitimate interests of applicants or holders of Industrial Property rights who, due to reasons beyond their control, have been unable to meet certain legal deadlines.
Although this figure is applicable to various types of Industrial Property —such as trademarks, designs, or utility models—, it is particularly relevant in the field of patents, due to the technical nature and strict formal requirements of the patent grant and maintenance procedures.
What is Reinstatement of Rights?
Reinstatement of rights allows an applicant or holder who has lost a right by missing a deadline before the Spanish Patent and Trademark Office (OEPM) to restore their previous legal situation, retaining the right that was lost, provided they can prove that they acted with due diligence and that the failure was due to circumstances beyond their control.
Its aim is to prevent disproportionate harm in situations where there was a clear intention to comply with legal obligations.
Specific Application to the Patent Regime
In the case of patents, deadlines are of vital importance: from complying with formal filing requirements to paying annuities, responding to office actions, or submitting translations. Losing rights in this context can have a significant economic and strategic impact.
That is why reinstatement of rights is a particularly valuable tool to avoid the irreversible loss of a patent or application due to isolated errors or failures in meeting deadlines.
Formal Requirements for Reinstatement of Rights
To be admitted, a reinstatement request must meet a series of formal requirements, established in Article 53 of the Spanish Patent Act 24/2015 and further developed by its Implementing Regulation:
- Deadline for submission: the request must be filed before the earlier of the following: (i) two months from the removal of the cause of non-compliance, or (ii) within twelve months after the missed deadline.
If the missed action was the payment of an annuity, twelve months are counted from the expiration date of the six-month grace period with surcharges as set out in Article 185.
Specific time limits apply when reinstatement relates to a priority right. - Payment of the corresponding fee: the applicant must pay the official fee for reinstatement of rights.
- Completion of the omitted act: the request must be accompanied by proof that the omitted act has been carried out, such as the payment of an annuity or the submission of a document.
Not all deadlines can be reinstated. According to Article 53 of the Patent Act, the following cannot be reinstated:- The deadline to file the reinstatement request.
- The deadline to oppose the grant.
- The deadline to oppose the application.
- Justification of the impediment: the request must include a reasoned and documented explanation of the causes that prevented compliance with the deadline.
Material Requirements: Due Diligence
The key element in the substantive assessment of a reinstatement request is proving that the applicant acted with the “diligence required by the circumstances”.
This means demonstrating that all reasonable measures were taken to avoid the failure, and that the non-compliance nevertheless occurred due to an exceptional, unforeseeable, or unavoidable event.
By contrast, ordinary negligence, simple miscalculations of deadlines, or lack of proper internal control often lead to the rejection of the request.
Conclusion
Reinstatement of rights in Industrial Property is a fundamental mechanism for safeguarding legal certainty and preserving the fairness of the system, with particular relevance in the field of patents.
In this context, even a minor or involuntary failure to meet a deadline can result in the loss of rights with significant economic and strategic value, severely impacting holders and the innovation ecosystem as a whole.
Given the importance of patents as drivers of innovation and competitiveness, the reinstatement mechanism is a crucial resource to avoid disproportionate consequences arising from formal errors.
However, due to its exceptional nature, its acceptance depends on strict compliance with legal requirements, especially proving that due diligence was exercised.
In this regard, preparing a reinstatement request before the OEPM requires not only technical precision but also strong legal reasoning. For this reason, it is essential to seek specialised advice to maximise the chances of success and ensure the effective protection of patent rights.
Article by Teresa González.
