In 2017, football opted for VAR and VOR video refereeing to reduce the likelihood of referees making mistakes in their decisions. Well, let's use this football analogy to explain the role of a procedure in our sector that we could consider "the VAR of patents."
A few years ago, on the occasion of the implementation of the new Patent Law in Spain, we talked about the holding of the first Oral Hearings during the procedure for granting a patent in our country. The system, with all due respect, could be compared to this arbitration instrument.
What does the Oral Hearing in the patent procedure consist of?
Once a notification of defects in the examination phase has been received by the Examination Division of the OEPM, the person filing a patent application has the possibility of submitting a written response against the objections to the registration of the patent. license.
If the objections are not satisfactorily resolved, the applicant may still submit a subsequent response or request, using the corresponding official OEPM form, an Oral Hearing.
At this Oral Hearing, the final decision will be made on the granting, denial or modification of the application for license presented.
The Guidelines for Examination of Patent Applications (Law 24/2015)) indicate that the Oral Hearing may be requested at the request of the applicant or the examiner before the OEPM communicates the conclusion of the substantive examination.
Request for Oral Hearing: Automatic or Formal?
Since this procedure came into force, questions have arisen as to whether a written response from the applicant stating his intention to request an Oral Hearing, in the event of persistent objections, is sufficient to convene the Oral Hearing automatically or whether it is necessary to formally request it again.
Since then, subsequent objection notices sent by the Patent Office are beginning to include this paragraph:
"Finally, in this regard we will say that the request for an Oral Hearing is optional for the applicant and is not considered effective if the applicant does not make it formally through a written request addressed to the OEPM.".
Consequently, the indication to request an oral hearing has been made outside the appropriate procedural moment and, therefore, the interested party could submit a subsequent written response to resolve the objections that persist or request an Oral Hearing.
At this point it should be noted that if the response submitted does not resolve the objections notified and some examiners directly notify the end of the substantive examination by reporting the denial of the application for license presented, this procedural moment prevents the request for an oral hearing from being submitted.
The Examination Commission: the VOR of patents
At certain points in the procedure, an Examination Committee is appointed, which would be like the video operations room. BEFORE which supports the Referee through the VAR, to harmonize criteria before transferring them to the applicant.
There is no evidence of unification of criteria among examiners in relation to the convening of an Oral Hearing before the conclusion of the substantive examination is communicated, if the applicant has previously shown interest in being convened to an oral hearing, even if it were presented outside the appropriate procedural moment.
All decisions taken by the OEPM Examination Division are subject to the principles of motivation, publicity and almost always consensus.
A position on this matter by the Review Commission would prevent this issue from ending up being transferred to the courts to interpret at whose request an Oral Hearing is convened and at what point in the procedure of the substantive examination phase it is requested.
Guarantees in the procedure: harmonization of criteria
Applicants, holders and representatives, in general, should be reassured that the Examination Commission harmonizes criteria before the Examination Division forwards the corresponding notification to the applicant of the license.
The examiners of the Examination Division of the OEPM, with specialized training and commitment to society, seek to interpret the law in a unified manner, thus respecting the principle of equality before it, and could unify criteria to determine who and when is summoned to an Oral Hearing in the substantive examination phase. In this way, the applicant would avoid being faced with a notification of the end of the substantive examination denying the patent application submitted.
Each decision of the Examination Division of the OEPM may be legitimately subject to criticism, but it will always have passed through filters and controls, also safeguarding the autonomy of each examiner in making individual decisions.
Thus, and with the help of this “patent VAR”, examiners decide on controversial situations by adopting opposing positions to applicants, but with the advantage that each of the decisions is contrasted and analysed by the OEPM's own internal control bodies.
John Anthony Romero, Associate Industrial Engineer of the Patent Area by ELZABURU
