New provisions for patent prosecution in Colombia
By means of Resolution 59669 of 2020, the Superintendence of Industry and Commerce (SIC-Colombian Patent Office), has modified some aspects of the patent prosecution. These changes are related with divisional applications, the patentability examination, and the recognition of the result of foreign patentability examinations (PPH).
Find below described the most important points of the Resolution:
Filing of divisional applications and modification thereof:
At the moment of filing a divisional application, the literal and consecutive division of the set of claims will no longer be required. In this sense, it will only be required that the subject matter claimed in the divisional application does not overlap with the subject matter currently claimed in the parental application nor other divisional applications.
Likewise, it should no longer be limited the scope of the specification, the drawings and the sequence listing of the divisional application based on the division made, but said items of the application should be the same as those originally filed in the parental application.
Once the divisional application is accepted, it cannot be modified to include claimed subject matter in the parental application, or in other divisional applications. Likewise, the set of claims of the parental application cannot be modified to include the subject matter of a divisional application unless the patent office requires so.
Issuance of additional technical examinations:
From now on, the limit of three (3) technical examinations for a single patent application does not longer exist. Instead, the examiner may issue the amount of technical examinations that considers necessary.
On the other hand, the applicant will have the possibility to request up to two (2) additional technical examinations, making the payment of the correspondent fee. This request can be made regardless of whether modifications are made to the application or not.
Amendments and Technical examination payment:
For all the amendments made to the set of claims, drawings, specification, or sequence listing, the payment of the corresponding modification fee must be done.
Additionally, in case that the amendment made in response to a technical concept comprises subject matter that has not been previously studied; the examiner may require the payment of the correspondent fee for performing an additional technical examination.
Recognition of the results of technical examinations carried out on foreign applications (PPH)
The request of the recognition of the results of technical examinations carried out by foreign offices, through the PPH agreement, will no longer be limited of being done until the moment of requesting the technical examination, but it can be made until before the notification of the first substantive requirement.
The foregoing will also apply to divisional applications, even if the same were filed during the stage of the substantive examination of the parental application.
Is important to highlight that currently, Colombia has PPH agreements in force with Europe, the United States, Spain, South Korea, Japan, Prosur, Pacific Alliance and PPH Global.
The new provisions herein summarized entered into force as of Monday, September 28, 2020.