The patent or utility model registration process involves a series of formal and technical requirements that must be rigorously met. However, it is not unusual for applicants to face a patent suspension, a temporary interruption in processing due to errors or deficiencies in the submitted documentation. This obstacle can be resolved if one acts quickly and precisely. In this post, we will explain what a patent suspension is, the types that exist, and the steps to follow to resolve it effectively.
What is a patent suspension and what types exist?
A patent suspension is an official notification issued by the Patent and Trademark Office indicating that the submitted application does not comply with certain requirements and must be corrected before the registration process can continue. In this context, processing is temporarily halted until the applicant rectifies the identified deficiencies. The suspension notification is published in the Official Gazette of Industrial Property (BOPI) and grants a period of 1 or 2 months, depending on the type of suspension, to make the necessary corrections.
Specifically, there are two main types of patent suspension:
- Formal suspension. This occurs when the application does not meet the required formal prerequisites. This can be due, for example, to the failure to submit required documents, errors in the format of the file, or non-compliance with the rules for presenting figures or descriptions.
- Substantive suspension. This occurs when the description of the invention or its claims are not correctly drafted. In this case, the examiner determines that the technical content presented is insufficient or does not meet the novelty and applicability criteria required to grant the patent or utility model.
How to respond to a patent suspension?
The first step when facing a patent suspension is to await the official notification to learn the specific details of the problem. Generally, the suspension notification will include a detailed explanation of the deficiencies identified by the examiner in charge of the file. Depending on the nature of the suspension, it may be necessary to make modifications to the documentation, adjust the description of the invention, or correct errors in the submitted documents.
In some cases, it is advisable to contact the responsible examiner directly to clarify doubts and obtain additional information about the required changes. Furthermore, if the suspension implies an error in the submitted documentation, the response must include a justifying brief demonstrating that the corrections made do not alter the matter originally requested, as this is not permitted.
In order, the process for responding to a patent suspension consists of the following steps:
- Reviewing the reason for the suspension: Analyze the notification in detail to understand why the application has been halted.
- Correcting errors: Adjust the documentation according to the observations made by the examiner. This may include modifications to the descriptive memory, figures, or claims.
- Preparing a justifying brief: Explain the modifications made and demonstrate that they do not alter the essence of the original application.
- Submitting the response within the established deadline: In this particular, it is important to ensure that all corrected documents and the justifying brief are sent to the Patent Office within the stipulated time. In certain cases, it may be necessary to pay a fee to complete the process.
Strategies for responding to a patent suspension
Evaluation of the reasons for suspension
When the Patent Office issues suspensions in patent and utility model registration applications, the priority is to thoroughly analyze the reasons given.
As we mentioned, the most common errors are usually related to the drafting of the technical specification or the claims. Specifically, this may include non-compliance with format rules, incorrect use of numbering, or lack of consistency in terminology. Failures may also occur in the figures, such as the use of unpermitted verbal indications, inadequate line thicknesses, or the presence of dimensions that do not comply with established guidelines.
Collection of evidence and formulation of arguments
Next, once the deficiencies indicated in the suspension have been identified, the next step is to gather all the information and arguments that support the patentability of the invention. For these purposes, it is advisable to present additional data and comparative analyses with the state of the art. Likewise, it is necessary to include evidence that demonstrates the novelty and industrial applicability of the innovation.
This process of collecting evidence is key to reinforcing the argumentation and demonstrating that the invention complies with the requirements for its legal protection. Occasionally, reference to technical studies, scientific publications, or expert reports may be useful to strengthen the applicant’s position in response to a patent suspension.
Adjustments to the specification and figures, and preparation of the argumentation
After the collection of evidence, it is necessary to proceed with the relevant modifications to the descriptive memory, claims, or figures. In this sense, it is essential to ensure that the changes strictly conform to what was contained in the original application. Remember that any addition that implies an expansion of matter could lead to a new suspension or even the definitive denial of the patent.
Apart from the technical modifications, it is essential to prepare an argumentative brief that explains clearly and structuredly the corrections made and how these are supported by the previously presented documentation. Undoubtedly, the soundness of these arguments is decisive in convincing the examiners about the viability of the application.
One of the most relevant aspects of this process is the response to the Search Report (IET). Basically, this report, prepared by the Patent Office, analyzes the patentability of the invention in comparison with existing technical knowledge. To respond adequately to the IET, it is fundamental to demonstrate that the invention has a novel character and that it is not obvious to an expert in the field.
Submission of the revised documentation to the Patent Office
Finally, the formal submission of the corrected documentation to the Patent Office concludes the process of rectifying a patent suspension. This procedure must be carried out within the established deadline, which may vary according to the nature of the suspension and the applicable legislation. In some cases, it will also be necessary to pay administrative fees for the submission of modifications.
It is important to ensure compliance with all formal requirements and that no critical deadlines have been overlooked. Therefore, it is highly recommended to seek advice from industrial property experts to ensure that the process is carried out correctly and efficiently.
ISERN advises you to avoid or respond to a patent suspension
Responding adequately to a patent suspension makes the difference between continuing with the patent procedure or having the application rejected. Therefore, it is advisable to seek specialized advice to ensure that the response complies with all required criteria and to maximize the chances of success in processing.
If you have submitted your patent application and are facing a suspension, having the support of an industrial property specialist can make a difference. With adequate advice, you can overcome the obstacles of the process and avoid the definitive loss of your application, thus protecting the value of your invention.
At ISERN Patentes y Marcas, we offer expert accompaniment at every stage of the procedure. In fact, we have over a century of experience in the registration and protection of patents, trademarks, and other intellectual property rights in Spain and Europe. Our team of highly qualified professionals accompanies you from the initial preparation to the resolution of any incident in the processing of your patent.
If you submitted your application on your own and have received a patent suspension, don’t worry. We are here to help you respond to it! Contact us and visit us at any of our twelve offices located in the main cities of Spain.