On September 7, 2018, Peruvian executive branch approved and published Legislative Decree 1397, a reformative act passed by the Peruvian Patent and Trademark Office, INDECOPI.
The mentioned Decree introduces changes to the current patent law and codifies certain practices mainly within patent prosecution and for infringement actions.
We have made a selection of the most relevant changes introduced, that can be summarized as follows:
Mandatory fragmentation of the set claims when filing a divisional patent application
The new Decree orders that for a divisional application to be admitted there cannot be any overlapping subject matter with the parental application. This from the perspective of the scope of the claims. The applicant must indicate which claims will be comprised in the parental application and which in the divisional.
An obligation to serve the applicant with the technical concept (Official action)
The Decree orders the Patent Office to serve the applicant with a new technical concept whenever new technical objections are perceived; this can be due to voluntary amendments introduced or by the response to a first official action.
No voluntary amendments admitted after the application enters into its resolutive stage.
After the examination phase has been completed, INDECOPI will inform the applicant of the entering to the final stage in prosecution; this is the resolutive stage. Once served, the applicant won’t be able to modify the patent specification nor the set of claims.
In connection with this, also provisions No. 131 and 132 which refer to reconsideration petitions and appeals has been adjusted as to state the impossibility of amending the application to sustain the remedy; this bans the applicant from amending the patent in any way.
Requirements for filing an opposition
Now it is not necessary to indicate the publication date as it is understood as information that the patent office has, also the requirement of showing the payment receipt is eliminated, only being necessary to enlist the number and date of the payment for initiating the opposition.
Also, the claimant will have the time to correct formal defects in the filing of the opposition.
For infringement actions provision 113 defines that preliminary injunctions will be maintained until a final decision is issued provided the action is allowed in the first instance. (If the alleged infringer appeals)
Protection of new forms of IP
The inclusion of two new IP rights (geographical indications and Traditional Specialties Guaranteed (TSG)
Now divisional applications of industrial design applications are also allowed.
This Decree enters into force as from its publication (Sep. 7) and applies to all on-going cases.