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News article | 19 November 2020

Recent changes in Colombia that may affect your patent application – Key aspects for European SMEs to bear in mind when protecting an invention in Colombia

Recent changes in Colombia that may affect your patent application – Key aspects for European SMEs to bear in mind when protecting an invention in Colombia

Lucia Tamayo Del Portillo
Senior regulatory affairs and compliance officer at Khiron Life Sciences Corp

Patents protect all new inventions that solve a technical problem by technical means. They are given in return for the complete disclosure of the invention to be used by anyone once the term of protection has lapsed. Generally, this term lasts 20 years. The idea behind patents is to encourage and foster innovation by creating incentives that allow inventors to recoup their expenditure in research and development, which are needed to create new solutions that advance technological knowledge and ensure access to better and improved technologies in fields such as medicine, machinery, and agriculture.

Despite having a certain degree of harmonisation, patents and their prosecution still differ from jurisdiction to jurisdiction. However, these legislative differences are being increasingly reduced thanks to the convergence promoted by different international agreements and regional initiatives, such as the Andean Community. This trade bloc (consisting of Peru, Colombia, Bolivia and Ecuador) adopted Decision 486, which establishes the new legal framework for intellectual property and is applicable to all its members.

In line with the abovementioned Decision, the Colombian Superintendency of Commerce (SIC) has issued Resolution No. 59669, which clarifies certain aspects of patent law. Considering their impact on the patent registration system, EU SMEs may find the following amendments particularly relevant:

Possibility of amending an application to change the scope of protection, for example, transforming a patent application into a utility model one, and vice versa

An interesting provision was furthered developed: in Colombia, it is now possible to request an amendment of a utility model application to change it into an industrial design. Of course, the scope of protection of these two IP rights is different (utility models protect the functionality of the product whereas designs protect the appearance thereof). However, the logic behind this interpretation is that the applicant will not lose the priority right through disclosure when requesting a utility model that does not meet the requirements, provided that it is possible to change it to an industrial design that protects the aesthetics of the product.

Adjustments related to divisional applications

In order to briefly explain what a divisional application is, we can use an example: if some of the claims regarding the invention are directed to a second invention, which is related but not united to the scope of the patent, the application may suffer from lack of unity. Therefore, it is necessary to divide the claims into different and independent patent applications. 

Let´s picture a sowing machine and a method for collecting and processing data in relation to it. One group of claims may protect the machine as such while another group may protect the method.

If the patent office requires this division to be made, then the applicant must comply. However, the divisional application can also be requested voluntarily by the inventor.

In Colombia, the term for requesting a divisional application is limited to the prosecution of the original patent application. This is not so for other Latin American countries, for example, in Chile, where said request can only be filed before the issuance of the first patentability exam.

In Peru, the request can be made if the initial application has not been granted. Moreover, in Europe, a divisional patent application can be filed within the term of the appeal in case the initial application has been rejected.

The recent amendments in Colombia provide guidance regarding the minimum requirements for dividing a patent application and the proper terms to do so. Under the scope of Resolution 59669, a divisional application will be accepted provided it does not have an overlapping subject matter in connection with the parental application and it proves to have sufficient support in the description to allow said division.

It must be taken into account that the entitlement to the division of a single patent application into several applications comes from the concept of unity of invention, which refers to the need for the description of the invention to cover a single inventive concept. Otherwise, the scope of protection granted by a patent may be excessive compared to what it is really disclosing.  

Changes regarding the examination of patentability

Following previous interpretations, it was customary for Colombian patent examiners to only issue a maximum of 3 official communications objecting to the patentability of the invention.  With the implementation of the new guidelines, examiners are now free to issue as many communications as necessary to make a decision.

Moreover, applicants can also request further examination if they pay an official fee.

Clarification of terms and procedure for requesting accelerated examination by means of the international cooperation agreement PPH (Patent Prosecution Highway)

Colombia´s patent office (SIC) is member of the PPH program, which allows applicants to use their favorable results on prior art searches and on patentability examination reports issued by other countries to give additional arguments that can lead to the granting of their patent.

For example, if my patent application has been found allowable/ patentable by the European Patent Office (EPO), I can use the prior art search and the examination report issued by European IP office before SIC in order to avoid duplicating efforts, therefore making the procedure more efficient. This does not mean that the patent is automatically granted, but it serves as a tool that helps bring benefits towards that goal.

With the new guidelines, the Superintendency of Industry and Commerce (SIC) explained that the PPH could be requested until the first official communication regarding the examination of patentability is issued.

Furthermore, following the spirit of change and modernisation, the SIC signed an extended cooperation agreement with the European Patent Office in November 2020. This agreement will allow the use of patent searches and examination results from EP patents in Colombia and will foster the cooperation between examiners from both offices, as well as the use of the Decisions made by the Enlarged Board of Appeals of the EPO to enlighten those cases that fall within Colombian patent jurisdiction.

If you are interested in knowing how these measures are being applied, do not hesitate to contact our Helpline. All the questions sent at this confidential, free-of-charge service will receive a tailor-made answer by our IP experts or they will be signposted to the appropriate organisations within a maximum of 3 working days.

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