Improvements in Patent Prosecution
Improvements in Patent Prosecution
Resolution Nr. 5409, 2012
As from September 18, 2012, applicants may voluntarily submit patentability reports issued by other IP offices accompanying their request for patentability examination at the Colombian Patent Office.
The results of patentability examinations performed by other IP offices will only be admitted under the following circumstances:
a. The Applicant may request, when applying for substantive examination, the admission of patentability reports issued by foreign authorities.
To this end, in addition to payment of the corresponding fees, the petition should include the following attachments:
A copy of any resolutions, judgments or decisions that may have been relevant for the determination of patentability by the examining Authority, containing patentable claims involved in the petition and, if applicable, their translation into Spanish.
A copy of any claims confirmed as patentable by the Office issuing the patentability report and, if applicable, their translation into Spanish.
A copy of any background art, information or documents cited by the examiner in charge of patentability examination at the Office of First Filing, and/or in any resolutions, judgments or decisions or non-patent literature, should be accompanied by Applicant unless they are available to the Colombian office by free database searches.
A table showing the correlation of claims of the Application with those accepted as patentable by the Authority issuing the patentability examination.
b. The Colombian Application should be:
An Application filed under the Paris Convention, either validly claiming priority to an earlier Application under section 9 of Decision 486/2000, for one of more Applications filed at the participating Offices, or claiming priority from an international PCT Application not claiming any priority,
A national phase PCT application related to an international PCT application validly claiming priority under Decision 486/2000, or validly claiming priority to a PCT application not claiming a priority date, or a national phase PCT application not claiming a priority.
c. The Application examined by the Office of First Filing should be the same filed with the Colombian Office
i.e., the claims of the original application or a divisional thereof should match those of the Colombian application.
d. The Applicant should attach a copy of the patentable claim/s resulting from the patentability examination of the Office of First Filing, together with its translation into Spanish, if applicable.
If the resolution, judgment or decision does not state clearly that a claim is patentable, the Applicant should attach to it a statement containing a technical analysis of the claim as compared to the cited prior art, indicating that the Office of First Filing has not rejected it and consequently it is considered patentable.
e. Each claim of any application filed with the Colombian Office as Office of Second Filing, should be sufficiently similar to a correlative claim filed with the Office of First Filing.
If there are inconsistencies, the Applicant will be requested to introduce the necessary amendments and pay the applicable fees.
Claims shall be considered Ã¢ÂÂsufficiently similarÃ¢ÂÂ when, apart from any differences arising from translation and from different claim format requirements, they have the same or similar scope, or when the claims filed with the Office of Second Filing have a narrower scope than the patentable claims of the Office of First Filing.
It will be understood that a claim has a narrower scope when a claim of an application filed in Colombia is amended so as to be limited to contain an additional technical feature which is supported in the Application as originally filed with the Office of Second Filing (description and/or claims).
When a set of claims filed with the Office of Second Filing introduces a new or different category of claims as compared to those considered patentable by the Office of First Filing, it will not be considered sufficiently similar.
The correlation table should be in Spanish and should show the correspondence of all claims filed with the Office of Second Filing with those filed with the Office of First Filing.
Note: If any of the documents listed in a) above have already been filed with the Office of Second Filing for this Application, it will be enough to provide the date on which they were submitted.
The admission of a patentability examination for a particular initial Application will not be applicable to its divisional Application. The Applicant may file a new petition for the divisional application and comply with all the above-mentioned requirements.
Admission of prior patentability or registrability examinations is not applicable to Utility Model and Industrial Design applications.
If you are interested in reading the complete Resolution translated in English, please click here.
Notes: Author: Gabriela Hanak, Head of Patents, Moeller IP Advisors