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Access Contract: additional requirement for patents in the Andean Area

In the patents’ world, there are some patents involving parts of a plant or animal for their development. The Andean region in 1996 issued a common regime on access to genetic resources (Decision 391) with the goal of regulating the participation of their genetic resources in the patent area. However, this legal instrument and its implementation are difficult to understand for the researchers.

If a patent application filed in a country of the Andean region (Colombia, Ecuador, Peru) requires genetic material obtained from that area to carry out the invention, it requires to file the access contract together with the patent application. In the case of Colombia, it must be granted by the Ministry of Environment, Housing and Territorial Development (MEHTD). If the contract is not submitted at the beginning of the process, it will be required along with the aspects of the first official action. If the mentioned document is not filed, the application could be considered as abandoned.

In Colombia, license for using genetic resources and/or its derivatives is required when a resource is obtained and maintained under conditions ex situ or in situ for the purpose of commercial exploitation. In practice, this petition process is delayed since it needs gathering the documents required by the MEHTD, a former opinion process (if it is applicable) and delay in the required technical concepts.

Therefore, Clarke Modet & Co recommends to advance that process before submitting an application which involves this kind of raw material in any country of the Andean area, since the granting of the license by the relevant entity, for example in the case of MEHTD in Colombia, is affected by all documents required for its obtaining. Nevertheless, it is true that the applicant of an invention may argue to the request of the Colombian Patent Office that the contract is not necessary –maybe because the animal or plant raw material is not native in the Andean region, this does not guarantee that the Patent Office declared the abandonment of the application for lack of that document.