News on patent proceedings before the Colombian Patent Office

12 November 2020

Through Resolution No. 59669 of 2020, the Colombian Patent Office modified (and clarified) some aspects of the patent process.

12 November 2020

Through Resolution No. 59669 of 2020, the Colombian Patent Office modified (and clarified) some aspects of the patent process . Among the modifications that took place are the following:

1. As regards to divisional applications:

– A literal division of the description and claims chapter of the original application should no longer be made.

– The scope of the invention claimed in the divisional application may not cover the same subject-matter as the specification of the parental application.

– The divisional specification shall be equal to the specification of the parental application and, if applicable, shall include the figures or sequence listing of the parental application. This is part of the elimination of the requirement of “literal division” of the description.

– When the divisional application is submitted voluntarily by the applicant, no cascades of divisionals will be accepted. Therefore, the divisional application must be filed from the initial or parental application.

The above is without prejudice to the number of divisions resulting from the same initial application, which may be filed at different times during the processing and will therefore be treated as independent applications.

– It was clarified that the applicant of a granted patent may divide it into 2 or more patents, provided that the scope of the invention claimed in the divisional patent(s) includes only the subject matter that is part of the scope of the claiming chapter initially granted and does not cover the same subject matter claimed in the initial application.

– It was clarified that amendments made to the initial parental application or patent will not affect the possibility of the latter continuing to be taken as initial for the divisional application or for the divisional patent.

2. With regard to the application for the Expedited Patent Procedure (PPH):

– The PPH may be applied for together with the examination of patentability and until before the first official substantive action is notified; this rule also applies to divisionals: if the divisional application is filed during the substantive examination stage of the initial application and that divisional must be processed under the PPH, the PPH application must be filed until before the first official substantive action in the divisional is notified.

3. In terms of response to technical office actions:

– Where amendments to the patent are required in response to a substantive official action, no fee will be charged for a new patentability examination, however, the applicant must pay the fee for amendments to pending applications relating to the descriptive chapter, claims chapter, drawings or sequence listing. Prior to this decision, this payment was not required.

Notwithstanding the above, the patent office may require payment of a new patentability examination, when after the response to the official substantive action it becomes clear that a new search and study is necessary, since the subject matter submitted had not been previously analysed.

– With the response to the official substantive action and regardless of whether amendments to the application have been made, the applicant may request a new patentability study to be carried out. This request may be filed at most twice and must be accompanied by the payment of the official fee for a patentability examination. If the applicant does not wish to request a re-examination, it is at the discretion of the Examiner to request such payment.

4. With regard to modifications during the procedure:

– If at any time during the procedure the claims, description, drawings or sequence listing are modified, it will be compulsory to pay the official fee for the voluntary modification.

All these amendments and clarifications are well received, since during patent prosecution, some clients and applicants in the past, found difficulties in having divisional applications granted and these new scenario clarifies the situation of these divisionals and its prosecution as well as relevant information regarding new fees and PPH procedure.

Feel free to contact if further information is required.

5/5 - (5 votes)

Adriana Peñaranda

Lawyer.Colombia office Director.


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