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New PTO resolutions for Trademarks and Patents in Colombia

The Patent and Trademark Office of Colombia, released the Resolution No. 59671 of September 25, 2020, setting special rules regarding sound, position, and animated trademarks and the claim of colors as a feature on traditional trademarks.

The most relevant topics include:

• On sound trademarks, it is necessary to evidence the graphic representation with the musical score along with an audio file that reproduces the sound in WAV, CDA, WMA, MP3, DOC, DOCX, PDF formats. (This requirement is already in force).
• On position trademarks, it is necessary to evidence the graphic representation with a label that unequivocally includes the position, size, layout and proportion of the mark. The trademark should be highlighted with dotted lines. (This requirement is already in force).
• On motion trademarks, it is necessary to evidence the graphic representation with a label reproducing the sequence of movements along with an animated reproduction (without sound) in GIF format. (This requirement is already in force).
• On color trademarks, it is necessary to evidence the graphic representation with a label that identify the color by means of an internationally recognized code (Pantone, Focoltone, RGB, etc.), along with the illustration of a shape dotted in lines with the color contained in it. (This requirement is already in force.
• For traditional trademarks, labels in black and white color apply where the applicant does not want to claim the color as a feature of the trademark. On the other hand, if the label includes colors, the color must be identified by an internationally recognized code (Pantone, Focoltone, RGB, etc.). This requirement will take effect as of April 5, 2021.

Additionally, the Superintendence of Industry and Commerce (SIC) has published Resolution 59669 of September 25, 2020, by means of which some amendments to the Sole Circular are made. The following are the most relevant amendments:

1. Divisional Applications:

• Divisional applications of a divisional are not allowed.
• The divisional application cannot cover the same subject matter included in the claim set of the parental application. However, it is not required to comply with any literality for the filing of the matter to be claimed. Additionally, it should be noted that the amendments done to the parental application will not affect the possibility that it continues to be understood as the initial application for the divisional application.
• The description of the divisional application must be the same as the one the parental application. The scope of the description should not be limited in the divisional application.

2. Response to office actions of the substantive examination:

In the event that amendments to the application are filed in response to the PTO requirement, the fee corresponding to a new patentability examination will not be paid, but the fee corresponding to amendments related to the descriptive chapter, claim chapter, drawings or sequence listing, must be paid.

• Notwithstanding the foregoing, the PTO may require the payment of the fee for a new patentability examination when the filed response and amendments evidence the need to carry out a new search and study, as the subject matter submitted had not been studied previously.
• The applicant may request a new patentability examination along with the response to the requirement and regardless of whether amendments have been submitted to the application. This may be requested a maximum of two times and the fee corresponding to a new patentability examination must be paid.

Therefore, the applicant may request up to two patentability examinations with the answer to a substantive examination. If the applicant does not wish to request a new exam, it will be up to the examiner to request the payment for a new one. This request will not be considered within the two opportunities to request the new exams.

In addition, if the descriptive chapter, claim chapter, drawings or sequence list is modified, it is necessary to pay the fees for voluntary amendment.

For cases whose response to the substantive requirements has already been filed, the examiner will issue an official action requesting the payment fee for the voluntary amendment, and if necessary, the payment fee for a new substantive examination.

3. Patent Prosecution Highway (PPH):

It can be requested with the patentability examination and until before the first official substantive action is issued (that is, before the first patentability examination is carried out). It is necessary to file:

• (a) Copy of all official actions that have been relevant to determine the patentability of the corresponding application.
• (b) Copy of all claims that have been determined to be patentable / allowable.
• (c) Copy of non-patent documents cited by the examiner.
• (d) A Spanish version of the table of correspondence between the claims as filed in Colombia and the claims that have been determined as patentable by the foreign office.

If the documentation is in a language other than Spanish, it is necessary to present the unofficial translation into Spanish of said documents.

4. Amendments during the prosecution:

When, at any time during prosecution, the claims, description, drawings or list of sequences are modified, it is necessary to pay the corresponding fee for voluntary amendment.

For further information, please do not hesitate to contact us at info@clarkemodet.com.co.

Carolina Daza