Resolution of the SPTO Director establishing the PCT Direct service in the framework of SPTO international procedures

By Mariano Santos

05-2020

The Patent Cooperation Treaty (PCT) does not provide, within its procedures, any means of establishing a dialogue between the applicant and the examiner before the International Searching Authority.

In order to significantly improve the chances of obtaining a positive written opinion in the international phase, the European Patent Office (EPO), as an International Searching Authority, implemented the PCT Direct service in 2014. This service, which was implemented with the aim of improving the efficiency and quality of the procedure before the EPO, allows applicants to file informal observations on the objections raised in the written opinion on the earlier application whose priority is claimed.

The Spanish Patent and Trademark Office (SPTO), as an International Searching Authority, applies Chapter 21 of the PCT International Search and Preliminary Examination Guidelines, which, although not binding, are designed to assist International Searching Authorities and International Preliminary Examining Authorities (ISA/IPEA) during the practice of such procedures, establishing a minimum set of criteria that each administration should use as a model for establishing its own quality management mechanism, in order, inter alia, to establish procedures for the timely issuance of high quality search and review reports.

As a result of the above, the SPTO has approved the Service Charter 2018-2021 on the activities of the SPTO as an ISA/IPEA and the inclusion of these services in the ISO 9001/2015 certification as well as the creation of the PCT Direct Service, by means of the present resolution, in order to deepen the quality of the services provided by the SPTO as an ISA/IPEA, going beyond the parameters imposed in Chapter 21.

This is a completely voluntary service for the applicants. However, in order to be able to use this service, two requirements must be met:

  • First, the PCT international application must designate the SPTO as the PCT International Searching Authority;
  • Secondly, the PCT international application must claim the priority of an earlier national or international application which has been sought by the SPTO.

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