PCT Applicant's Guide Spain - Valid as from 25 Jul 2024

GENERAL INFO
RO
ISA
IPEA
BIO
NATIONAL CHAPTER

Applicable as from 25 July 2024

(published on 26 July 2024)

Summary of latest changes in this version
GENERAL INFO: Payment methods
RO: Electronic filing, Incorporation by reference
IPEA: IPEA Competency
Summary of requirements for entry into the national phase: National phase, Restoration of the right of priority, Reinstatement of rights

Consult the full list of the changes

Previous version(s): You can consult previous versions of the document. The only applicable version is the current version.
15 Sep 2023, 1 Jan 2024, 1 Apr 2024, 18 Apr 2024, Current Version

Useful information

The PCT Applicant’s Guide is updated almost every week with information received by the International Bureau.

In case of question, please contact the Office or the International Bureau: pct.guide@wipo.int.

List of abbreviations used in this document:

Office: Spanish Patent and Trademark Office

SPL: Law No. 24/2015 of 24 July 2015 on Patents

SRD: Royal Decree 316/2017 of 31 March 2017

List of currencies used in this document:

CHF (Swiss franc), EUR (Euro), USD (US dollar)

Countries and Offices information:

The list of acronyms used for Offices is no longer shown as it has been integrated in the mouseover functionality for each ST.3 code shown in this document.
Refer to List of WIPO Standards, Recommendations and Guidelines formerly Annex K, List of country names and two-letter codes. It includes a list of short names and two-letter codes accepted for use in indicating States, other entities and intergovernmental organizations and their Offices in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3.
Also refer to PCT Contracting States formerly Annex A.

Office profile

For more technical information about the Office, refer to ePCT Office profile.

PCT Reservations, Declarations, Notifications and Incompatibilities

Rule 20.8(a-bis), Rule 20.8(b-bis)
Refer to the full list.
PCT Rule 20.8(a-bis), The Offices (in their capacity as receiving Offices) of the States listed in this table have notified the International Bureau (IB) that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d), are not compatible and/or cannot be considered to be compatible with the national law applied by the Office, or are deemed to have notified the IB of this incompatibility on the basis of a notification made under PCT Rule 20.8(a) that remains in effect.
PCT Rule 20.8(b-bis), The Offices (in their capacity as designated Offices) of the States listed in this table have notified the International Bureau (IB) that PCT Rules 20.5bis(a)(ii) and 20.5bis(d), are not compatible and/or cannot be considered to be compatible with the national law applied by the Office, or are deemed to have notified the IB of this incompatibility on the basis of a notification made under PCT Rule 20.8(b) that remains in effect.

Office Closed dates

The Office is closed weekly on Saturday and Sunday

Additional closed dates can be consulted on the Office Closed dates page

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Contracting State:

Spain

Two-letter code:

Name of Office:

Spanish Patent and Trademark Office

Location:

Paseo de la Castellana 75
28046 Madrid
Spain

Mailing address:

Same as above

Telephone:

(34) 910 780 780

E-mail:

informacion@oepm.es

Website:

https://www.oepm.es

Facsimile:

None

Does the Office accept the filing of documents by facsimile or the like means (PCT Rule 92.4)?

Does the Office send notifications via e-mail in respect of international applications?

Yes

Would the Office accept evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used (PCT Rule 82.1)?

Is the Office prepared to allow applicants to make applications available to the WIPO Digital Access Service for Priority Documents (DAS) (PCT Rule 17.1(b-bis)?

For further details on how to request this Office to make applications available to DAS, refer to:
https://www.oepm.es/es/invenciones/gestion-de-invenciones/otros-tramites/Servicio-de-acceso-digital-de-la-OMPI-DAS/

Yes, the Office is prepared to allow applicants to make international and national applications available to the WIPO DAS

Competent receiving Office(s) for international applications filed by nationals or residents of this State:

ES,

EP,

Does national legislation restrict the filing of international applications with foreign Offices?

Law No. 24/2015 of July 24, 2015, on Patents, Art. 163.

Unless priority of an earlier application filed at the Spanish Patent and Trademark Office is claimed.

Yes

Filing restrictions apply to:

Inventions made in Spain

Applications by residents

Competent designated (or elected) Office(s) for this State:

National protection: ES

European patent: EP

Types of protection available via the PCT:

National: Patents, utility models

European: Patents

Payment methods accepted by the Office:

For more information, refer to Forms of payment of fees:
https://www.oepm.es/en/formas-de-pago/Pago-de-tasas/index.html

The payment of fees may be effected by electronic means or in cash. All payments must be in Euro and indicate the application number, if already known, the name of the payer and the category of fee being paid.

Availability under the national law for an international-type search (PCT Article 15):

None

Provisional protection after international publication:

Where the designation is made for the purposes of a national patent:

After a patent has been granted, the applicant is entitled to reasonable compensation for the period following the international publication of the international application. For that purpose, and if the international publication has not been effected in Spanish, the applicant must submit to the Office a translation of the international application into Spanish. The provisional protection applies as from the date of publication of the international application in Spanish by the Office.

Where the designation is made for the purposes of a European patent:

After the international publication (if in Spanish) or, where that publication was in a language other than Spanish, after the publication by the Office of a translation into Spanish of the claims of the European patent application submitted by the applicant in view of provisional protection and accompanied by a special fee, compensation reasonable in the circumstances may be requested. The translation of the claims into Spanish cannot be filed before the international application has entered the European regional phase and the mention of the international publication has been published in the European Patent Bulletin. If the applicant does not reside in Spain or in a country of the European Union, the translation must be either prepared by a patent attorney entitled to practice before the Office, or certified by a sworn translator appointed by the Ministry of External Affairs of Spain. In addition, persons who declare to have linguistic and technical knowledge in accordance with the Ministerial Order ETU/320/2018 of March 26, 2018 may also prepare the translation

Information of interest if this Contracting State is designated (or elected)

For national protection

Time when the name and address of the inventor must be given:

The indication of the address of the inventor is not required by the Office. The name may be indicated in the request or may be furnished later. If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

Are there special provisions concerning the deposit of microorganisms and other biological material?

Yes, refer to Annex L.

For a European patent

Refer to Annex B(EP)

Annex C - Receiving Office

Competent receiving Office for nationals and residents of:

Spain

Language in which international applications may be filed:

Depending on the applicant’s choice of competent International Searching Authority, a translation into a corresponding language (refer to Annex D) may have to be furnished by the applicant (PCT Rule 12.3)

Spanish

Language accepted for language-dependent free text in the sequence listing:

Spanish,

or English and Spanish

Language in which the request may be filed:

Spanish

Number of copies required by the receiving Office if application filed on paper:

Does the receiving Office accept the filing of international applications in electronic form?

Where the international application is filed in electronic form in accordance with and to the extent provided for in Part 7 and Annex F of the Administrative Instructions, the total amount of the international filing fee is reduced (refer to “Fees payable to the RO”).

Where the international application contains a sequence listing as a separate part of the description, this should be furnished in accordance with Annex C of the Administrative Instructions, that is, in compliance with WIPO Standard ST.26 XML format; no fees are due for sequence listings filed in this format.

For the relevant notification by the Office, refer to the Official Notices (PCT Gazette) dated 2 February 2023, pages 44 et seq. and 17 August 2023, pages 159 et seq.

Yes, the Office accepts electronic filing via Front Office (OEPMSei) or EPO online filing software

Does the receiving Office accept the submission of pre-conversion documents and, if yes, in which format (Section 706 of the PCT Administrative Instructions)?

Yes, any format. The files should be archived in ZIP format.

Does the receiving Office accept incorporation by reference (PCT Rule 20.6)?

Yes

Does the receiving Office accept the submission of color drawings on an informal basis and transmit them to the International Bureau?

Yes, color drawings are exceptionally accepted on an informal basis and transmitted to the International Bureau.

Does the receiving Office accept requests for restoration of the right of priority (PCT Rule 26bis.3)?

Yes, the Office applies the “due care” criterion to such requests

Competent International Searching Authority:

EP,

Competent International Preliminary Examining Authority:

EP,

Fees payable to the RO:

Transmittal fee:

75.75 EUR

International filing fee:

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

1,381 EUR

Fee per sheet in excess of 30:

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

16 EUR

Reductions (under Schedule of Fees, item 4):

Electronic filing (the request in character coded format):

208 EUR

Electronic filing (the request, description, claims and abstract in character coded format):

311 EUR

Search fee:

Refer to
Annex D(EP)
Annex D(ES)

Fee for priority document (PCT Rule 17.1(b)):

30.28 EUR

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)):

Online 91.35 EUR

On paper 107.46 EUR

Is an agent required by the receiving Office?

No, if the applicant resides in Spain or in another country of the European Union
Yes, if the applicant resides in a country other than a country of the European Union

Who can act as agent?

Any patent attorney whose name appears on a list maintained by the Office

Waiver of power of attorney:

Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4, also refer to International Phase, paragraph 11.048).

Has the Office waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

In case of reasonable doubt regarding the agent’s entitlement to act; and upon appointment of, or for any paper submitted by, an agent or a common representative who was not indicated in the request form at the time of filing.

Has the Office waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex D - International Searching Authority

International Searching Authority competent for the following Receiving Offices:

CL,

CO,

CR,

CU,

DO,

EC,

ES,

HN,

MX,

NI,

PA,

PE,

Fees payable to the ISA:

Search fee (PCT Rule 16):

This fee is payable to the receiving Office in the currency or one of the currencies accepted by it. The fee is reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person or a legal entity and is a national of and resides in a State not party to the European Patent Convention and which is classified by the World Bank in the group of countries of “low income”, “lower middle income” or “upper middle income”, refer to:
http://www.wipo.int/pct/en/fees/oepm_fee_reduction.html

1,751 CHF

1,845 EUR

1,989 USD

Additional search fee (PCT Rule 40.2):

This fee is payable to the International Searching Authority and only in particular circumstances. The fee is reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person or a legal entity and is a national of and resides in a State not party to the European Patent Convention and which is classified by the World Bank in the group of countries of “low income”, “lower middle income” or “upper middle income”, refer to:
http://www.wipo.int/pct/en/fees/oepm_fee_reduction.html

1,845 EUR

Fee for copies of documents cited in the international search report (PCT Rule 44.3):

per national document 4.69 EUR

per foreign document 4.69 EUR

Fee for copies of documents contained in the file of the international application (PCT Rule 94.1ter):

per page 0 .23 EUR

Protest fee (PCT Rule 40.2(e)):

None

Late furnishing fee (PCT Rule 13ter.1(c)):

None

Conditions for refund and amount of refund of the search fee:

Money paid by mistake, without cause, or in excess, will be refunded, upon request by the applicant

Where the international application is withdrawn or is considered withdrawn, under PCT Article 14(1), (3) or (4), before the start of the international search:
refund of 100%

Where the Authority benefits from an earlier search already made by the Authority on an application whose priority is claimed for the international application, depending upon the extent to which the Authority benefits from that earlier search:
refund of 100% or 50%

Where the Authority benefits from an earlier search already made by an Authority of a State party to the EPC:
refund of 75%

Where the Authority benefits from an earlier search already made by an Authority of a State not party to the EPC:
refund of 25%

Languages accepted for international search:

English,

Spanish

Does the Authority accept informal comments on earlier search results where an international application claims priority from an earlier application already searched by this Authority?

Yes The applicant may submit informal comments to overcome objections raised in the search report and written opinion for the priority application. At the Spanish Patent and Trademark Office this service is called “PCT Direct”. Informal comments should be sent to the receiving Office together with the international application in the form of a separate letter entitled “PCT Direct/informal comments” (“PCT Directo/comentarios informales”). PCT Direct submissions are published on PATENTSCOPE.

Types of physical media accepted for the furnishing of nucleotide and/or amino acid sequence listings:

None. Physical media are not accepted. Sequence listings must be filed in electronic form (refer to Administrative Instructions under the PCT, Annex C)

Subject matter that will not be searched:

The subject matter specified in items (i) to (vi) of PCT Rule 39.1 with the exception of any subject matter searched under the patent grant procedure in accordance with the provisions of Spanish patent law No. 24/2015 of 24 July 2015

Waiver of power of attorney:

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex E - International Preliminary Examining Authority

International Preliminary Examining Authority competent for the following Receiving Offices:

CL,

CO,

CR,

CU,

DO,

EC,

ES,

HN,

MX,

NI,

PA,

PE,

Fees payable to the IPEA:

Preliminary examination fee (PCT Rule 58):

This fee is payable to the International Preliminary Examining Authority. The fee is reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person or a legal entity and is a national of and resides in a State not party to the European Patent Convention and which is classified by the World Bank in the group of countries of “low income”, “lower middle income” or “upper middle income”, refer to:
http://www.wipo.int/pct/en/fees/oepm_fee_reduction.html

595.37 EUR

Additional preliminary examination fee (PCT Rule 68.3):

This fee is payable to the International Preliminary Examining Authority and only in particular circumstances.

595.37 EUR

Handling fee (PCT Rule 57.1):

This fee is payable to the International Preliminary Examining Authority. It is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

208 EUR

Fee for copies of documents cited in the international preliminary examination report (PCT Rule 71.2):

per national document 4.69 EUR

per foreign document 4.69 EUR

Fee for copies of documents contained in the file of the international application (PCT Rule 94.2):

per page 0.23 EUR

Protest fee (PCT Rule 68.3(e)):

None

Late furnishing fee (PCT Rule 13ter.2):

None

Conditions for refund and amount of refund of the preliminary examination fee:

Money paid by mistake, without cause, or in excess, will be refunded, upon request by the applicant

In the cases provided for under PCT Rule 58.3:
refund of 100%

If the international application or the demand is withdrawn before the start of the international preliminary examination:
refund of 100%

Languages accepted for international preliminary examination:

English,

Spanish

Subject matter that will not be examined:

The subject matter specified in items (i) to (vi) of PCT Rule 67.1 with the exception of any subject matter examined under the patent grant procedure in accordance with the provisions of Spanish patent law No. 24/2015 of 24 July 2015

Are there any restrictions with regard to the competence of the Authority acting as an International Preliminary Examining Authority?

Waiver of power of attorney:

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex L - Deposits of Microorganisms and Other Biological Material

Requirements of designated and elected Offices

Only Offices whose applicable national law contains provisions concerning the deposits of microorganisms and other biological material are listed in Annex L. Unless otherwise indicated, deposits may be made for the purposes of patent procedure before these Offices with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

For a list of these institutions refer to:

http://www.wipo.int/treaties/en/registration/budapest/pdf/idalist.pdf (and the detailed requirements for each institution at: https://www.wipo.int/budapest/en/guide/section_d/subsection_c.html)

Notifications related thereto may be consulted under:

http://www.wipo.int/treaties/en/registration/budapest/

Further information concerning the requirements of international depository authorities under the Budapest Treaty is available at:

http://www.wipo.int/budapest/en/guide/index.html

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

— the indications prescribed in Rule 13bis.3(a)(i) to (iii):

Where applicant requests publication earlier than 16 months from the priority date, two months from notification of the Office

— any additional indications:

At the time of filing (as part of the application)

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

To the extent available to the applicant, relevant information on the characteristics of the biological material

Additional information

For the purposes of patent procedure before the Spanish Patent and Trademark Office a deposit is required not later than at the date of filing the international application with any legally recognized institution and, in any case, with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms (Article 25.2.a) SPL).

If the applicant wishes that, until the publication of the mention of the grant of a Spanish patent or for 20 years from the date of filing if the application is refused or withdrawn, the biological material shall be made available as provided in Article 45 SPL only by the issue of a sample to an independent expert, the applicant must, by a written statement, inform the International Bureau accordingly before completion of technical preparations for publication of the international application. Such statement must be separate from the description and claims of the international application and must preferably be made on Form PCT/RO/134, referred to in Section 209 of the Administrative Instructions under the PCT.

National Phase

Summary of requirements for entry into the national phase

Time limits applicable for entry into the national phase:

Under PCT Article 22(1): 30 months from the priority date
Under PCT Article 39(1)(a): 30 months from the priority date

Does the Office permit reinstatement of rights (PCT Rule 49.6)?

SPL, Article 53. https://www.boe.es/buscar/act.php?id=BOE-A-2015-8328

Form: https://www.oepm.es/es/herramientas/Formularios/formularios-de-invenciones/solicitud-internacional-PCT/restablecimiento-de-derechos/

Yes, the Office permits reinstatement  of rights under the “due care” criterion. The request for reinstatement must be accompanied by a statement of reasons for the failure and is preferably accompanied by any declaration or other evidence in support of the statement of reasons

Fee for reinstatement:

— for electronic payment

301 EUR

— for payment in cash

501 EUR

Translation of international application required into (one of) the following language(s):

Shall be furnished within 30 months from the priority date. If not furnished within that time limit, the Office will invite the applicant to comply with the requirement within two months from the date of the invitation

Spanish

Required contents of the translation for entry into the national phase:

Under PCT Article 22: Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19), any text matter of drawings, abstract

Under PCT Article 39(1): Description, claims, any text matter of drawings, abstract (if any of those parts has been amended, both as originally filed and as amended by the annexes to the international preliminary examination report)

Is a copy of the international application required in particular circumstances?

Does the Office accept color drawings under its national law?

SRD, Annex https://www.boe.es/buscar/act.php?id=BOE-A-2017-3550

Yes, color drawings are accepted

National fees:

Patents or utility models

Filing fee

Online 87.03 EUR

On paper 102.39 EUR

Exemptions, reductions or refunds of fees:

Fee reductions are available to Spanish public universities and entrepreneurs. For further information refer to Invention fees:
https://www.oepm.es/en/tasas-y-precios-publicos/tasas-de-invenciones/

Refund of fees are available if the ISA was SPTO. For more information refer to the Instruction on the refund of search report fee and substantive examination fee.

Instruction on the refund of search report fee and substantive examination fee, refer to:
https://www.oepm.es/export/sites/portal/comun/documentos_relacionados/PDF/2019_03_06_Reembolso_Tasas_IET_Resolucion.pdf

Special requirements of the Office (PCT Rule 51bis):

If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

Name of the inventor if it has not been furnished in the “Request” part of the international application

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Instrument of assignment of the priority right where the applicants are not identical

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Where the applicant uses the form for national phase entry, it is not necessary to submit a deed of assignment with regard to the applicant’s entitlement to claim priority of the earlier application as that form contains a statement in this regard (refer to Box 6 of form for national phase entry (Annex ES.II)).

Instrument of assignment of the international application if the applicant has changed after the international filing date

Appointment of an agent if the applicant is not resident in Spain or in another country of the European Union

Who can act as agent?

Any patent attorney whose name appears on a list maintained by the Office

Does the Office accept the effect of restoration of the right of priority by the receiving Office (PCT Rule 49ter.1)?

Yes

Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

Yes, the Office applies the “due care” criterion to such requests

The procedure in the national Phase

ES.01 FORM FOR ENTERING THE NATIONAL PHASE

The Office has available a form for entering the national phase (refer to Annex ES.II) and strongly recommends the use of this form.

ES.02 TRANSLATION (CORRECTION)

Errors in the translation of the international application can be corrected with reference to the text of the international application as filed (refer to National Phase, paragraphs 6.002 and 6.003).

ES.03 FEES (MANNER OF PAYMENT)

SPL Art. 184
The manner of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex ES.I.

ES.04 APPOINTMENT OF AN AGENT

SPL Art. 175, SRD Art. 108
An agent must be appointed by filing a power of attorney if the applicant is not resident in Spain or in a country of the European Union. However, the submission of a separate power of attorney or a copy of a general power of attorney is not required, except in case of reasonable doubt regarding the agent’s entitlement to act; upon appointment of, or for any paper submitted by, an agent who was not indicated in the request form at the time of filing; or when filing an assignment, a change in the name of the applicant or the proprietor of the patent, a license, a withdrawal, a limitation or revocation or an opposition to a patent or to a utility model. A model of power of attorney is given in Annex ES.III.

ES.05 ANNUAL FEES

SPL Art. 184, SPL Art. 185
After a patent has been granted, a fee must be paid for maintaining the patent in force. Payment must be made for the third, and each following year after the international filing date which has expired at the time of granting the patent, within three months after publication in the Industrial Property Bulletin of a mention of the grant of the patent. Payment of the subsequent annual fees must be made within three months after the due date, namely the expiration of the month containing the anniversary of the international filing date. Payment can still be made, together with a 25% surcharge, within three months or, together with a 50% surcharge, before the expiration of the sixth month after the due date. Once the sixth month has expired, the patent may still be maintained in force by paying, before the due date for the next annual fee, the corresponding fee with a 50% surcharge and the regularization fee. The amounts of the annual fees are indicated in Annex ES.I.

ES.06 DEED OF ASSIGNMENT

SRD Art. 101
When the applicant claims the priority of an earlier application filed by an applicant who is not identical with the applicant of the international application, a deed (or deeds) of assignment must be furnished. For details, refer to the sample of such deed (not an official form) in Annex ES.III. Legalization is not required. For time limits, refer to the Summary. When the applicant is not the inventor, it is sufficient to designate the inventor and to indicate how the applicant acquired the right to the patent. Where the applicant uses the form for national phase entry, it is not necessary to submit a deed of assignment with regard to the applicant’s entitlement to claim priority of the earlier application as that form contains a statement in this regard (refer to Box 6 of form for national phase entry (Annex ES.II)).

ES.07 AMENDMENT OF THE APPLICATION

SPL Art. 48, SRD Art. 101.2(e), PCT Art. 28, PCT Art. 41
The applicant may amend or correct the claims, the description, and the drawings before the grant of a patent according to the provisions of the law, provided the scope of the subject matter of the application does not go beyond the disclosure in the international application as filed. Any request for amendment is subject to the payment of a fee for modification indicated in Annex ES.I.

ES.08 REVIEW UNDER PCT ARTICLE 25

SPL Art. 44, SPL Art. 54, PCT Art. 25, PCT Rule 51
The applicable procedure is outlined in paragraphs 6.018 to 6.021 of the National Phase. If, upon review under PCT Article 25, the Office denies an error or omission on the part of the receiving Office or the International Bureau, a petition against this decision may be lodged within one month from the date of publication of the decision in the Industrial Property Bulletin. Within the same one-month time limit, a fee for petition must be paid (for the amount, refer to Annex ES.I). If the Office confirms its decision, an administrative appeal may be lodged with the competent court.

ES.09 EXCUSE OF DELAYS IN MEETING TIME LIMITS

SPL Art. 44, SPL Art. 53, SPL Art. 54, SRD Art. 69, PCT Art. 24(2), PCT Art. 48(2)
Reestablishment of rights may be requested where the applicant was unable to observe a time limit during the international phase or before the Office, in spite all due care required by the circumstances having been taken. A request for reestablishment must be filed with the Office in writing and the omitted act must be completed. The request must state the grounds on which it is based and must set out the facts to which it refers. If the Office refuses the reestablishment of rights, an administrative appeal may be lodged within one month after the publication of the final decision of the Office in the Industrial Property Bulletin. Nevertheless, certain matters are excluded from the reestablishment of rights. Time limits may be extended for two months by the Office provided that the request for extension is made before the expiration of the time limit. Any proceeding whose time limit falls on a Saturday, a Sunday or a public holiday will be considered fulfilled in due time if it is done on the first working day following that Saturday, Sunday or public holiday.

ES.10 UTILITY MODEL

SPL Art. 141, PCT Art. 4(3), PCT Art. 43, PCT Rule 49bis.1(a), PCT Rule 49bis.1(b), PCT Rule 76.5
If the applicant wishes to obtain a utility model instead of a patent in Spain, on the basis of an international application, the applicant, when performing the acts referred to in Article 22 or 39, shall so indicate to the Office, preferably in the corresponding box of the application form.

ES.11

SRD Art. 58
The requirements for the national phase are basically the same as for patents.

ES.12

PCT Art. 7(2)(ii), PCT Rule 7.2
Where the international application does not contain drawings, the applicant must furnish the drawing(s) within the time limit applicable under PCT Article 22 or 39(1). Where the applicant does not furnish the drawing(s) within that time limit, the Office will invite him to furnish the drawing(s) within a time limit fixed in the invitation. Where an international patent application is converted into a utility model application (refer to the next paragraph), the drawing(s) must be submitted together with the request for conversion.

ES.13 CONVERSION

SPL Art. 51, SRD Art. 46
An international application for a patent may be converted into a utility model application after the applicant has complied with the requirements for entry into the national phase for a patent application, as indicated in the Summary. The conversion is subject to the payment of a fee for conversion indicated in Annex ES.I and may be requested until the end of the substantive examination of the patent application.

ES.14

SRD Art. 46
An international application for a utility model may be converted into a patent application after the applicant has complied with the requirements for the entry into the national phase for a utility model application, as indicated in the Summary. The conversion is subject to the payment of a fee for conversion indicated in Annex ES.I and may be requested before the grant of the utility model.

Annexes

Annex ES.I - Fees

For further information refer to Invention fees:
https://www.oepm.es/en/tasas-y-precios-publicos/tasas-de-invenciones/

Patents or Utility models

Filing fee

Online 87.03 EUR

On paper 102.39 EUR

Fee for conversion

Online 8.94 EUR

On paper 10.50 EUR

Fee for amendment

Online 20.11 EUR

On paper 23.65 EUR

Request for prior art report

Where the Office benefits from a prior international search report, this fee may be refunded or reduced depending upon the extent to which the Office benefits from that earlier search refer to:

— SPL, Art. 183.2
https://www.boe.es/buscar/act.php?id=BOE-A-2015-8328

— Instruction on the refund of search report fee and substantive examination fee
https://www.oepm.es/export/sites/portal/comun/documentos_relacionados/PDF/2019_03_06_Reembolso_Tasas_IET_Resolucion.pdf

Online 593.65 EUR

On paper 698.42 EUR

Request for examination

Where the Office benefits from a prior international preliminary examination report, this fee may be refunded or reduced depending upon the extent to which the Office benefits from that earlier examination report refer to:

— SPL, Art. 183.3
https://www.boe.es/buscar/act.php?id=BOE-A-2015-8328

Online 337.96 EUR

On paper 397.61 EUR

Annual fees:

— for the 3^rd year counted from the international filing date

18.85 EUR

— for the 4^th year counted from the international filing date

23.52 EUR

— for the 5^th year counted from the international filing date

45 EUR

— for the 6^th year counted from the international filing date

66.41 EUR

— for the 7^th year counted from the international filing date

109.63 EUR

— for the 8^th year counted from the international filing date

136.47 EUR

— for the 9^th year counted from the international filing date

171.26 EUR

— for the 10^th year counted from the international filing date

220.40 EUR

— for the 11^th year counted from the international filing date

276.27 EUR

— for the 12^th year counted from the international filing date

324.37 EUR

— for the 13^th year counted from the international filing date

372.39 EUR

— for the 14^th year counted from the international filing date

420.86 EUR

— for the 15^th year counted from the international filing date

449.45 EUR

— for the 16^th year counted from the international filing date

468.07 EUR

— for the 17^th to the 20^th year counted from the international filing date

per year 499.85

Fee for regularization of an annual fee

On paper 102.01 EUR

Appeal fee

Online 76.39 EUR

On paper 89.86 EUR

Request for reestablishment of rights

Online 91.35 EUR

On paper 107.46 EUR

How can payment of fees be effected?

The payment of fees may be effected by electronic means or in cash. All payments must be in Euro and indicate the application number, if already known, the name of the payer and the category of fee being paid.

For more information, refer to Forms of payment of fees:
https://www.oepm.es/en/formas-de-pago/Pago-de-tasas/index.html

Forms

The following documents are maintained by the Office. Refer to the Office website (Annex B) for latest version and other languages.

Annex ES.II - Request for entry into the national phase

Annex ES.III - Power of attorney

Annex ES.IV - Deed of assignment

Change(s) as of 25 July 2024 (Highlighted in blue for easy reference. Mouse hover the text to consult previous value)

Annex B - Information on Contracting States or Intergovernmental Organization

Payment methods accepted by the Office:

For more information, refer to Forms of payment of fees:
https://www.oepm.es/en/formas-de-pago/Pago-de-tasas/index.html

Annex C - Receiving Office

Does the receiving Office accept the submission of pre-conversion documents and, if yes, in which format (Section 706 of the PCT Administrative Instructions)?

Yes, any format. The files should be archived in ZIP format.

Does the receiving Office accept incorporation by reference (PCT Rule 20.6)?

Yes

Does the receiving Office accept the submission of color drawings on an informal basis and transmit them to the International Bureau?

Yes, color drawings are exceptionally accepted on an informal basis and transmitted to the International Bureau.

Annex E - International Preliminary Examining Authority

Are there any restrictions with regard to the competence of the Authority acting as an International Preliminary Examining Authority?

Summary of requirements for entry into the national phase

Does the Office permit reinstatement of rights (PCT Rule 49.6)?

SPL, Article 53. https://www.boe.es/buscar/act.php?id=BOE-A-2015-8328

Form: https://www.oepm.es/es/herramientas/Formularios/formularios-de-invenciones/solicitud-internacional-PCT/restablecimiento-de-derechos/

Yes, the Office permits reinstatement of rights under the “due care” criterion. The request for reinstatement must be accompanied by a statement of reasons for the failure and is preferably accompanied by any declaration or other evidence in support of the statement of reasons

Fee for reinstatement:

— for electronic payment

301 EUR

— for payment in cash

501 EUR

Does the Office accept color drawings under its national law?

SRD, Annex https://www.boe.es/buscar/act.php?id=BOE-A-2017-3550

Yes, color drawings are accepted

Does the Office accept the effect of restoration of the right of priority by the receiving Office (PCT Rule 49ter.1)?

Yes

Processing

WIPO - PCT Applicant's Guide ES - Spain
Spanish Patent and Trademark Office

Useful information

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Annex C - Receiving Office

Annex D - International Searching Authority

Annex E - International Preliminary Examining Authority

Annex L - Deposits of Microorganisms and Other Biological Material

National Phase

Summary of requirements for entry into the national phase

The procedure in the national Phase

Annexes

Processing

WIPO - PCT Applicant's Guide ES - Spain Spanish Patent and Trademark Office

Error Information Warning Confirmation

WIPO - PCT Applicant's Guide ES - Spain
Spanish Patent and Trademark Office