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Patent restoration in Colombia

Patent restoration in Colombia has become valid since the issuance of the Decree No. 1873 of September 29, 2014, which has the aim to avoid that the protection period of an invention’s patent, appeared to be shortened in an unjustified manner, basically by negligence of the Colombian Patent Office, in the different patentability prosecutions that are handled by this office.

The issuance of said decree was mainly caused by the frequent, non-justified extension of a significant number of patentability prosecutions. This fact was directly affecting the protection period of patent applications in case of being granted, which just to remind, it consists of 20 years counted from the application’s filing date before the local patent office. However, in the practice, said granting period was facing a reduction period of about 3 to 4 years.

Based on the above, the mentioned decree establishes, for all the member countries of the Andean Community that “with an exception for pharmaceutical patent applications, establishing the means for compensate the patent holder for unreasonable delays given by the local patent office, in the issuance of the granting decision, for which is necessary restoring the patent rights term. The member countries would consider as unreasonable delays over 5 years from the application’s filing date or over 3 years from the request of the patentability examination, which ever is the latest, always that the periods related to the applicant’s actions, are not included for the delayed periods determination”.

At this point, it should be clarified that the fact because pharmaceutical patent applications are an exception for this regulation, is because in case of extending the protection period for more than 20 years, it would not allow third parties to obtain access, domain or simply a greater exploitation of said pharmaceutical products, which might be crucial for public health.

As it had been mentioned before, this decree applies for every single patent application that has not been granted before September 29, 2014, fact that means that the decree may apply for that application that is still under formal study, publication or patentability examination. In case the patent holder wants to put in practice this regulation established by the mentioned decree, he should request the restoration term, in the next two months, counted from the time the patent office has granted the patent. Delayed periods exclusively related to prosecution performed by the Examiner of the Colombian Patent Office, should be demonstrated by official documents.

In case the request is accepted, it would be added one calendar day to the restoration period, for each calendar day of unreasonable delay, which would be counted from the next calendar day in which the patent’s protection period has expired. Lastly, it is important to point out that that the fact of applying the restoration term, does not avoid the patent holder for continue paying the annuities for the granted patent maintenance.

By this new regulation, it is pretended to provide an enhanced patentability examination, being this faster, more efficient and maintaining its high quality. Likewise, it is desired protecting the patent applicant’s rights in Colombia, in order to further strengthen the industrial property field in our country.

Carmen Sánchez-Puelles