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Changes in the Colombian practice related to the filing of Divisional Applications

The Colombian Industrial Property Legislation is founded in the Decision 486 of the Andean Community Commission, however, the interpretation that the local patent office has given to said statements, has resulted in a different manner of applying said norm according to the local practice.

In this regard, article 36 of the Decision 486, establishes the regulation under which divisional applications should be filed before the Patent Office. It is stated that divisional applications can be submitted at any time along the patentability prosecution, with the only requirement that these cannot extend the scope of parent application. It further says that divisional applications would benefit from the priority date of their parent application and lastly, that the local patent office is in its right to require the fractioning of the parent application, in case it does not comply with the unity of invention requirement.

Being the above the base of this regulation, it is now possible appreciating how it has been changed under the local practice. In this regard, in order to make shorter the patentability prosecution in Colombia, about a year ago, the local patent office decided to issue only one single official action, instead of the two and three that they were used to issue, before was published the resolution that defined the patent application final state (either the granting or denial decision). Thus, under this patentability prosecution model, the applicant could only file divisional applications before the issuance of said first resolution, however, nowadays the applicant is able of fractioning the parental application up to the reconsideration petition submission, as in response to the denial or partial denial decision. This amendment to the practice, is in turn to provide a balance in view of the reduction to the number of official actions that were used to be issued.

Furthermore, the Colombian Patent Office added some restrictions in connection to the matter that should be claimed in the divisional application, issue to which the cited article is silent about it. In this regard, it has been stated that divisional applications cannot report the same subject matter that was initially reported by the parent application, this means, submitting the same claim chapter that had been initially filed by the parent application, given that it corresponds to matter that had already been studied and consequently, its final patentability verdict is known a priori. Likewise, it cannot occur overlapping of the matter reported in the divisional application to the one claimed by the parent application. In either of both scenarios, it would be enough reason to reject the divisional application.

According to these guidelines and in order to avoid rejecting any divisional application in view of any of the above circumstances, it has been suggested to the applicant, submitting a draft response together with the filing of the divisional application, wherein it is clearly stated, based on technical arguments, how the matter reported therein is not only different, but also it does not overlap the matter claimed in the corresponding parent application.

In conclusion, it can be asserted that through the interpretation made to the regulation established in article 36, Decision 486 of the Andean Community, the Colombian Patent Office is avoiding elongating patentability prosecutions, which final verdict is already known and in consequence, is providing priority to the patentability prosecution of the parent application.

Carmen Sánchez-Puelles