New Policies Related to the Division of Patent Applications and the Patentability Test

Mar 09, 2016

The Colombian Patent Office, part of the Superintendence of Commerce and Industry (SIC), issued Resolution #3719 in 2016 which took effect on February 3, 2016. Its purpose is to standardize and define policies related to divisional applications and technical aspects in patent matters.

Regarding the divisional applications, there are several salient points:

Following the guidelines from Decision 486, this new resolution indicates that an application can be split up either  i) at the request of the national office, only when it is judged that the application does not comply with the requirement of the singularity of the invention, or  ii) by the applicant’s initiative, for any reason and at any time in the process leading up to the final decision by the SIC. This means that this could occur before the licensing decision or, if it is the case, until the decision that determines the appeal for reversal.

Having said that, a distinguishing characteristic of the resolution is that, once the law is being enforced, cascading divisional applications (divisional applications of the divisional applications) will not be permitted. The applicant will only be allowed to apply for divisional applications stemming from the original application.

It is worth noting that the resolution does not set any limits on the number of divisional applications that can be applied for in relation to the original application. It should be noted that the division must happen in a literal manner.

Last but not least, the SIC established that all divisional applications that do not comply with the agreed-upon requirements will be subject to appeal by their agency. This would not be the case if the divisional widens the matter of the parental application. The latter means that the SIC cannot directly deny a divisional due to the fact that the matter was already analyzed in the original application. In such a case, the SIC would give the applicant a chance to respond to any objections.

Contacts:

Ana María Castro 

acastro@lloredacamacho.com 

Eliana Portilla 

eportilla@lloredacamacho.com 

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