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New Resolution regulates patent proceedings
On February 2, 2016, the Colombian PTO (Superintendence of Industry and Commerce – SIC) published Resolution 3719, which regulates some of the articles of Decision 486, a common IP regime for Bolivia, Colombia, Ecuador and Peru – regarding the conversion of applications, the filing of patent divisional applications and the patentability examination.
- Resolution 3719 establishes that a request for: i) the conversion of an application; ii) the division of a patent application into two or more divisional applications, or iii) the merger of two or more patent applications into one, can be filed at any time during the proceedings, until the resolution deciding on a request for reconsideration of a final decision (either granting or rejecting) has been issued by SIC.
Therefore, Resolution 3719 clarifies articles 35, 36 and 37 of Decision 486, which state that a request for the conversion, division or merger of patent application respectively can be filed “at any time during the proceedings.”
- Regarding the “conversion of an application”, Resolution 3719 establishes that said term refers to the conversion of a patent into a utility model application and vice versa, and of a utility model to an industrial design application.
When a request for the conversion of a patent application into a utility model application is filed after the deadline to request the examination for a utility model has expired, the utility model examination fees have to be paid when requesting the conversion. The same applies when requesting the conversion of a utility model application into a patent application.
With regard to divisional applications, Resolution 3719 states the following:
- If the applicant does not divide a patent application as suggested by SIC when the application does not comply with the unity requirement, the patentability examination will be only performed on the first inventive group identified by the examiner.
- A divisional application cannot be the parent application for a further divisional, i.e., a divisional application cannot be further fractioned into one or more divisional applications.
- When a divisional application is filed voluntarily by the applicant, the division will have to be done “literally”, taking into account the consecutive numbering of the claims. Additionally, the description will have to be in agreement with the division of the claimed subject matter.
- Resolution 3719 establishes that, if with the response to a patentability examination report, the applicant: i) amends the set of claims; ii) amends the description; iii) or files a new set of claims, the Colombian PTO could, if deemed necessary, issue up to two more examination reports. However, the patentability examination must be finished after 18 months counted from the publication date (9 months for utility models).
Additionally, it is established that in any of the cases i-iii described above, the official fees corresponding to the substantive examination must be paid again.
Should you require any further information, please contact us. We will follow the implementation of this resolution closely and will keep you updated regarding any further developments on this matter.