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New Dispositions for Patent Prosecution in Colombia

By means of Resolution No. 3719 of 2 February 2016, the Colombian PTO has modified some procedures in relation to the conversion, division and merger of patent applications and the requirements for substantive examination. Therefore, patent applicants from here on out, will have to keep the following in mind:

The applicant may request a conversion, division or fusion of its application at any time during the prosecution and up until the PTO´s final decision even on appeal.

When the applicant requests the conversion of a patent of invention to a utility model patent during the prosecution, it will not be necessary to pay the official fee for examination of a utility model, as this fee will be covered by the one already paid for the patent of invention. A new payment will only be needed if a new examination is required for the utility model.

The division of an application may be presented at the request of the PTO or a by initiative of the applicant. If the PTO requires the division, but the applicant does not present it, the PTO will only consider and examine the first inventive group identified in the original application.

The applicant may only request the division of an initial application. The PTO will not allow the applicant to request the division of an already divided application.

The divisional request will be studied according to the stage of the prosecution in which the parental application is at the time.

From now on, in order file a divisional the original claims must also be presented exactly as they were in the parent application and two fees must be paid; the fee for filing a divisional and the fee for examination of the divisional. To modify the filed divisional a section with the modifications must be included and the modification fee must be paid.

Regarding the patentability examination procedure, when a modification is made to the claims or the description in response to the PTO´s office action indicating that the application does not meet the patentability requirements, a fee payment must be made for a new patentability exam. The PTO may carry out up to two new patentability examinations, if this does not exceed 18 months counted from the publication of the application of the patent of invention and 9 month from the publication of a utility model application.

In particular, the possibility of up to three patentability examinations represents a huge change in the Colombian patent practice since from now on the applicants have the opportunity to consider different strategies and file further arguments before the issuance of a final decision. Nevertheless, in order to take advantage of this new regulation, it is advisable that applicants pay the first patentability examination close to the publication of the application, rather than close to the expiration of the six available months, so that there is more time, in case a second or third examination is necessary.

Carmen Sánchez-Puelles