Changes to Patent Prosecution in Colombia

On 25 September 2020, Colombia’s National Patent and Trademark Office issued new legislation (Resolution No 59669) impacting the patent prosecution process in Colombia. The most notable impacts of the new legislation are as follows:

Divisional Patent Applications#

The regulation changes improve flexibility in the drafting of the claims of a divisional patent application. Previously, a ‘literal division’ was required wherein divisional applications could contain only claims whose text corresponded exactly to the claims extracted from the parent application. This requirement has been removed, such that it is now only required that the divisional claims do not contain matter already claimed in the parent application and do not extend the scope of protection beyond that contained in the parent application.

Further, the description of the divisional application must now correspond to the description of the parent application. As such, the claims of the divisional application no longer have to be accommodated in the description of the divisional application.

Substantive Examination#

The Colombian Patent Office may now issue as many substantive office actions as it deems necessary during examination and there is no longer a limit on the period for examination. The Patent Office may also issue an additional search if the claims contain unexamined subject matter after amendment.

The applicant may voluntarily make up to two substantive examination requests, together with the response to an office action and the payment of the corresponding fee, without time limitation. Previously, a re-examination of the application could only be voluntarily requested or required by the Colombian Patent Office, as a result of the modification of the claims in response to an office action and within 18 months from the publication of the application.

While the removal of the limit of time for examination may be more convenient, it leaves the overall period of examination at the discretion of the Patent Office. This may complicate the process, leading to higher costs during patent prosecution wherein the Patent Office may issue additional substantive office actions for non-substantive amendments.

Payment of Official Fees#

The applicant is now required to pay the modification fee with a request of modification when an application is modified both in response to an office action or action from the applicant.

Additionally, the applicant is now required to pay a filing fee and a substantive examination fee for each divisional application.

If additional claims are introduced in response to an office action, the applicant is required to pay excess claim fees for each claim above ten claims.

Formalities#

It is now permitted to file a contract from which the assignment of rights from the inventor is presumed, in lieu of the assignment itself. Previously, submitting a document other than the inventor’s assignment to the applicant was not established.

If you require any further information or assistance in connection with your intellectual property, or the intellectual property of your business, then please contact Murgitroyd.