On 2 September, the Spanish Patent and Trademark Office (SPTO) published a resolution on the extension of deadlines for administrative procedures for applicants with residence or registered office in Ukraine. This resolution extends the extension of deadlines for a period of four months for the procedures indicated below. In this way, it makes valid the possibility of extension that was contemplated in the resolution of 3 May last.
According to the SPTO, through this resolution by its director, given that “the circumstances that led to this extension of deadlines have not changed, it is necessary to agree on a new extension for a period of four months”.
This extension of administrative deadlines is based on Royal Decree-Law 6/2022, of 29 March, which adopts urgent measures within the framework of the National Response Plan to the economic and social consequences of the war in Ukraine.
The aim of this measure published by the SPTO, which has just been extended, is to avoid or mitigate, as far as possible, that “the situation of applicants for intellectual property titles resident or with registered offices in Ukraine could be aggravated as a result of this armed conflict”.
It should be noted that among the administrative procedures for which the time limit is extended, the procedure for the filing of oppositions is excluded. This exception in the deadline for oppositions, which may not be extended, is due to the fact that “in the process of filing oppositions, unlike in the rest of the administrative procedures, there are interested third parties whose rights could be affected by this extension of deadlines”.
Finally, the SPTO points out that in the event that the end of the armed conflict in Ukraine is declared prior to the new extension included in the resolution, i.e. before 3 January 2023, this transitional measure may be cancelled.
If you have any questions about this, our international department is at your disposal to clarify any doubts you may have using the contact form on this page.
Remember that this measure is only aimed at applicants who have their residence or registered office in Ukraine. Below, you can find the list of procedures that are subject to extension grouped in modalities:
Distinctive signs- Response to the trademark and trade name form suspension agreement.
- Response to the trademark and trade name substantive suspension agreement.
- Response to the provisional refusal of protection of international registrations.
- Proof of use request.
- Provision of proof of use.
- Response to the proof of use.
- Response to the agreement to suspend renewals.
- Response to the agreement on the suspension of assignments.
- Response to the agreement to suspend licences.
- Response to the name change suspension agreement.
- Response to the agreement to suspend waivers.
- Response to the notice of objection’s deficiencies.
- Response to the notification of defects in the submission of any of the above pleadings.
Industrial designs- Response to the failure of the examination of admissibility and formalities.
- Response to the failure due to defects observed in the ex officio examination.
- Rectification of irregularities in the formal requirements for the publication of the design, before the end of the postponement of the publication.
- Response to the rectification of defects in the notice of opposition.
- Response of the owner of the registration to the oppositions filed
- Application for renewal of the design registration.
- Application for renewal of the design registration with fee surcharges.
- Response to defects in the renewal application.
- Response to the suspension of transfers, name changes and licences.
- Response to the suspense of resignations, corrections, personations of representatives, changes of address and any other request that may be made.
- Presentation of the re-establishment of rights.
- Response to the suspension of the re-establishment of rights.
- Design application claiming right of priority.
Inventions
Patents- Response to defects in the admission for processing or national phase entry.
- Response to the failure due to defects in the ex officio examination.
- Response to the intention to refuse correction or addition of priority.
- An answer to the defect for lack of clarity or consistency or for defects in case of irregularities in a number of independent claims.
- Response to the objection of lack of unity of invention.
- Petition and payment of the substantive examination and/or reply to objections to the written opinion.
- Responses to individual submissions during the substantive examination.
- Response to irregularities in the notice of opposition.
- Response to the notice of opposition.
- Reply to the Patent Owner’s Response.
- Response to further submissions by the proprietor in the course of the opposition.
- Complementary certificates
- Answer to defects in the examination of formalities.
- Response to defects detected in the examination of the application.
- Utility models
- Response to defects in the admission for processing.
- Response to the failure due to defects in the ex officio examination.
- Response to the intention to refuse correction or addition of priority.
- Response to irregularities in the notice of opposition.
- Response to the notice of opposition.
- Response to the provisional state of the art report.
- Common procedures
- Petition and formalisation of divisional application.
- Payment of the fee for the state of the art report or to complete the payment in divisional applications following a request by the Office.
- Modality change request.
- Payment of the change of mode fee or completion of the payment upon request of the Office.
- Provision of the documentation corresponding to the new modality.
- Correction of defects in the case of an application for authorisation of a first deposit abroad.
- Re-establishment of rights
- Presentation of the re-establishment of rights.
- Response to the suspension or intention to dismiss a re-establishment of rights.
- Petition for limitation or revocation
- Answer to defects in the limitation or revocation of the patent or utility model.
- Transfers, name changes and licences (contractual or full)
- Answer to the suspense.
- Response to defects in the withdrawal of the offer of a licence as of right.
- Claiming priority
- Application claiming the right of priority.
- Other
- Payment of annuities, including reductions of annuities following withdrawal of the offer of licences of right, or maintenance fees.
- Response to the suspense of resignations, corrections, personations of representatives, changes of address and any other request that may be made.
- European patents in Spain
- Application for the definitive protection of a European patent in Spain.
- Response to defects in the application for definitive or provisional protection.
- Response to the request to provide the Spanish translation of a European patent application.
- PCT international patents in Spain
- Response to an invitation to correct irregularities in a PCT international application.
- Response to any other communication made by means of a PCT form (the one indicated on the form itself issued by the SPTO as receiving Office).
- Administrative appeals
- Interposition of appeals.
- Response to the hearing of appeals.
- Response to the formalities for remedying defects in any of the previous pleadings.