The case started in 2003, when patent application no. 200300857 for “Biological removal of metal contaminants” was filed. The Spanish Office requested the applicant for 3 times to amend several deficiencies and finally decided to reject the application. The decision, dated October 3, 2005, was appealed before the Office. With the appeal the applicant introduced further amendments. The Office considered that amendments are not admissible during the appeal and confirmed the decision, without taking in consideration those amendments. Further appeal was also dismissed by the Court of Valencia. The cassation appeal filed against this decision has now been admitted. Main argument for this decision is:
“It was compulsory for the Spanish Patent and Trademark Office to allow the correction of such deficiencies in the description by one the ways mentioned above: giving a new deadline for amendment or, where appropriate, accepting the amendment in the appeal. Regarding this possibility it should be noted that there is no legal obstacle to do it in those procedures, in which there is no lapsing term to amend and involve a kind of dialogue between the applicant and the Administration to correct any errors or deficiencies of patent claims that can by nature be corrected”.Full text of the Spanish Supreme Court ruling here (in Spanish) (pdf alert).