In 2017, soccer adopted video assistant referee (VAR) and video on-field referee (VOR) technology to reduce the likelihood of referees making mistakes in their decisions. Well, let’s use this soccer analogy to explain the role of a procedure in our industry that we could consider “the VAR of patents.”
A few years ago, when Spain’s new Patent Law was implemented, we discussed the holding of the first oral hearings during the patent grant procedure in our country. The system, with all due differences, could be compared to this arbitration mechanism.
What is an oral hearing in patent proceedings?
Once a notice of defects has been received during the examination phase from the Examination Division of the Spanish Patent and Trademark Office (OEPM), the patent applicant has the option to file a written response to the objections raised against the patent registration.
If the objections are not satisfactorily resolved, the applicant may still file a subsequent response or request an oral hearing using the appropriate official form from the Spanish Patent and Trademark Office (OEPM).
At that oral hearing, a final decision will be made regarding the granting, denial, or modification of the patent application that has been filed.
The Guidelines for the Examination of Patent Applications (Law 24/2015) state that an oral hearing may be requested by either the applicant or the examiner before the OEPM notifies the applicant of the conclusion of the substantive examination.
Request for an Oral Hearing: Automatic or Formal?
Since this procedure took effect, questions have arisen as to whether a written response from the applicant stating their intention to request an oral hearing—should objections persist—is sufficient to automatically schedule the oral hearing, or whether it is necessary to formally request it again.
Since then, subsequent notices of objection issued by the Patent Office have begun to include this paragraph:
“Finally, on this point, we would like to note that the request for an oral hearing is at the discretion of the applicant and is not considered valid unless the applicant formally submits it in writing to the Spanish Patent and Trademark Office (OEPM).”
Consequently, the request for an oral hearing was made outside the appropriate procedural timeframe; therefore, the interested party may submit a subsequent written response to address any remaining objections or request an oral hearing.
At this point, it should be noted that if the response filed does not address the notified objections and some examiners directly notify the applicant of the conclusion of the substantive examination, informing them of the rejection of the filed patent application, this procedural step prevents the filing of a request for an oral hearing.
The Examination Board: The VOR of Patents
At certain stages of the proceedings, an Examination Committee is appointed—which would be similar to the Video Operations Room ( VOR) that supports the arbitrator through the Video Assistant Referee (VAR)—to harmonize criteria before communicating them to the applicant.
There is no record of a uniform standard among examiners regarding whether to schedule an oral hearing before the conclusion of the substantive examination is communicated, if the applicant has previously expressed an interest in being summoned to an oral hearing, even if that request was submitted outside the appropriate procedural timeframe.
All decisions made by the Examination Division of the Spanish Patent and Trademark Office (OEPM) are subject to the principles of justification, transparency, and, in almost all cases, consensus.
A position on this matter by the Examination Committee would prevent this issue from ultimately being referred to the courts to determine at whose request an oral hearing is convened and at what stage of the substantive examination process it is requested.
Procedural Safeguards: Harmonization of Criteria
Applicants, patent holders, and representatives, in general, can rest assured that the Examination Board harmonizes its criteria before the Examination Division forwards the corresponding notification to the patent applicant.
The examiners of the OEPM’s Examination Division, with specialized training and a commitment to society, seek to interpret the law in a consistent manner, thereby respecting the principle of equality before the law; they could establish uniform criteria for determining who is summoned to an oral hearing during the substantive examination phase and when. This would prevent applicants from receiving a notice of the conclusion of the substantive examination that denies their filed patent application.
Every decision made by the Examination Division of the Spanish Patent and Trademark Office (OEPM) may legitimately be subject to criticism, but it will always have gone through various filters and checks, while also safeguarding each examiner’s autonomy in individual decision-making.
Thus, with the help of this “patent VAR,” examiners rule on controversial situations by taking positions that may conflict with those of the applicants, but with the advantage that each decision is reviewed and analyzed by the SPTO’s own internal oversight bodies.
Juan Antonio Romero, Associate Industrial Engineer in the Patent Department at ELZABURU