April 2016 – The Colombian Patent Office issued Resolution No. 3719, dated February 2nd 2016, in which it clarified and modified certain patent prosecution procedures.
The main purpose of these changes address the newly imposed administrative rule which now requires the payment of the patent examination fee every time the claiming or descriptive chapter is modified. The Patent Office has also brought back the possibility of issuing up to two (2) official actions during the examination of a Patent Application. The resolution also addressees and clarifies procedures for conversion, division and merger of patent applications. Significantly, the Patent Office may suggest the division of a patent application and its failure to do so may result in the divided matter not to be examined and thus abandoned. Below is a synopsis of the changes.
Conversion, division or merger of patent applications.
The applicant for a patent shall have the possibility of filing an application for conversion, division or merger at any time during the process, even before the resolution deciding an appeal, if the same has been filed. The changes introduced and their application are are summarized as follows:
Conversion.
The conversion of a patent application is referred to in article 35 of Decision 486 of the Andean Community and it is understood as a change in the mode of protection, which can be, from a patent of invention to a utility model or from a utility model to and industrial design. The conversion may be filed as a result of a suggestion from the patent office or at the request of the applicant. The converted application shall continue its process, applying the procedures and requirements of the new mode of protection.
When the petitioner requests the conversion of a patent to a utility model and such conversion request is filed after the expiration of the patent examination request of a utility model, the applicant must submit together with the application for conversion, the payment of the patent examination for utility model. Similarly, if the applicant of a patent for utility model requests conversion to a patent of invention, the applicant shall make the timely payment of the patentability examination within the period set out in articles 44 and 85 of Decision 486 of the Andean Community.
Division.
Divisional applications. During the prosecution of a patent application, a divisional application may be filed as a result of a request made by the patent office, especially in cases where the Patent Office finds that the initial application lacks unity of invention. The applicant may also file a divisional application, but may do so only in respect to an initial application, regardless of the number of divisional applications derived from that initial application, each of which shall be processed as a separate application.
When the applicant fails to file a divisional application as suggested by the Patent Office, the examination on the first inventive group identified in the original application shall be the only one to be examined.
Content of the divisional application. When the divisional application is filed by the applicant, the division must be made literally, with a consecutive numbering of claims, without prejudice to any subsequent amendments of such claims contained in the divisional application, which can be made by the applicant after the payment of the fees established for this purpose.
The descriptive chapter shall be in accordance with the division of matter made. If the Divisional is not made following the requirements required in this new regulation and those contained in Decision 486 of the Andean Community, the patent office shall issue a request in accordance with the provisions of article 17 of the Code of Administrative Procedure and Administrative Matters, so that the applicant complies with such requirements and, if not so, the docket shall be abandoned.
The filing of a divisional application shall not alter the course of the processing of the initial application. The divisional applications composed of other inventive groups shall continue their own process, upon payment of the filing and examination fees, and these shall undergo examination.
Merger.
The Colombian Patent Law in its article 37 provides that at any time during the processing of its application, the applicant may merge two or more patent applications into one.
The rule annotated herein states that the Colombian Patent Office shall decide by resolution, the merger of two applications and the applicant must fill out special forms P102-F05, and submit a new technical document containing a descriptive chapter, claiming chapter and drawings (if appropriate), in accordance with the merger to be carried out, taking into account that the applicant may not extend the scope of protection from the one contained in the initial applications being merged.
Upon acceptance of the application for merger, the same shall be carried out in accordance with the provisions of article 38 et seq. of Decision 486 of the Andean Community.
Examination
Patentability Examination: Under the title "Requirements for non-patentability or non-fulfillment of requirements for granting a patent," the annotated provision presents a clarification and modification regarding the patent examination, in order to require the applicant to pay official fees for each act of the examiner.
It is established "When the applicant in his response to the patent examination amends, i) the claiming chapter; ii) the description of the invention to be protected; iii) or files a new claiming chapter, the Direction of New Creations, if it deems it necessary, may carry out up to two new examinations.
In any case, the number of requirements for non-patentability is subject to a patentability examination term which shall not exceed 18 months from the publication of the patents of invention and 9 months for utility models.
In all the above cases, you must carry out a new payment of the fee for the patent examination.
Once an appeal is filed, the applicant may not request a new patentability examination. This means that once the first administrative appeal is filed, the National Patent Office shall not offer the possibility to request a further examination, therefore, the final decision on whether to grant or deny the patent shall be issued when deciding the appeal.
Conclusion
The annotated decree clarifies some points already regulated in Decision 486 of the Andean Community, but the purpose of this regulation is the collection of official fees for any action carried out by the patent examiner, noting that the content of the standard is characterized by ordering the payment of fees for all the actions referred to in the same, so that if fees are not paid the request is not examined and consequently the patent rejected.
In fact in some cases handled by our firm, in which we gave response to official actions and submitted new claims, we received a call from the Patent Office, warning us that since the procedure had been modified by the regulation annotated herein, it was necessary to proceed with the payment of the patent examination fee, subject to the amendment of the claims chapter. Failure to make payment would result in non-examination of the patent and for the newly filed claiming chapter not to be taken into account with the response to the official action.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
