New guidelines for the examination of patent applications
By Marta Garcia
In October 2016, the Patent Department of the Dominican PTO published a new version of the guidelines for the examination of patent applications. The guidelines, which are revised yearly, are aimed at clarifying those legal and administrative criteria that are considered not to be clearly defined in the Industrial Property Law 20-00 and its Regulations.
The new guidelines introduce the following important changes:
- Regarding the criteria for the assessment of Markush claims, the guidelines establish that:
– The description must comprise at least one example for each class of substituent. If there are no examples of substituents, the invention cannot be reproduced.
– Only heterocycles that are duly exemplified will be accepted in the claims.
In practice, this means that examiners are currently requesting the limitation of Markush claims to the working examples.
– The characterization of chemical compounds shall be done not only by the melting point but also by one or more of the following methods: infrared absorption spectrum (IR), mass spectrometry (MS), nuclear magnetic resonance (NMR) or liquid chromatography (LC).
– The biological activity for the claimed compounds must be demonstrated by tests.
- With regard to divisional applications, the guidelines specify that the claimed subject matter of a divisional patent application must be clearly different from the claimed subject matter in the parent application, in order to avoid overlapping. Additionally, when filing a divisional application it is recommended to point out the pages of the specification on which the claims are based.
Hence, precautionary divisional applications directed to the original claims can still be filed. However, during the substantive examination stage the examiner will require to limit them in order to avoid overlapping.
The guidelines also clarify that a patent application can be divided at any time, before a final resolution is issued. Additionally, according to the IP Law and its Regulations, a granted patent can also be divided in one or more patents.
- The number of issued substantive examination reports has been reduced from three to two. However, the guidelines clarify that the Patent Department can discretionarily issue a further substantive examination report when deemed necessary.
Even though it is not specified in the new guidelines for the examination of patent applications, the Dominican examiners have started to request the filing of a “technical abstract” explaining the advantage or technical solution of the application compared to the closest prior art.
The request for a “technical abstract” is being currently made in all patent applications regardless of whether the novelty and inventive step has been acknowledged or not.
Should you require any further information, please contact us.
Source: Patent Department of the Dominican National Office of Industrial Property (ONAPI)