Rules for Divisional Patent Applications Change before the Colombian Patent Office

Autor: Zulma Cepeda

The Colombian Patent Office (CPO) issued Resolution No. 59669 dated September 25, 2020, whereby it established new rules for divisional patent applications. The new rules are a welcomed change from the previous complicated, inefficient and time consuming requirements. The changes include eliminating the previous requirement to remove from the divisional’s specification any matter directed to the parent application, and also flexibilizing the patentability examination procedure when unity of invention is objected.

One of the most important changes within the new rules is that it removes a previous express rule whereby a divisional patent application could only include claims from the parent application which were consecutively numbered (as a block) and had to be transcribed literally. This made it impossible to file a divisional over partial matter from a single claim.  The new rules exclude this requirement, which in principle means that we can now dissect claims to extract matter which the applicant wants to divide.  

Other notable changes include the following: 

  • The specification of a divisional patent application must be the same as that of the parent patent application. Previous practice required the specification to be limited specifically to the object claimed in the divisional patent application; however, there were no clear guidelines as to the extent of the limitation and potential language referencing matter within the parent application, and risk of dismissal of the divisional was high if the amendments did not satisfy individual Examiner’s requirements.
  • During substantive examination, as a result of an objection for lack of unity of invention, the applicant may now choose which inventive group remains in the parent application. In response to an objection based on the lack of unity of invention, where the examiner suggests specific inventive groups to be divided, the applicant may divide the application in any group or groups it sees fit, not necessarily matching those suggested by the examiner, and deciding which group remains in the parent application.  The CPO will accept the response and study the group or group as selected by the applicant. If the applicant does not divide the application, the examiner will study the first inventive group of claims identified by the examiner.

    The previous regulation was silent as to how an applicant could respond to an objection based on the lack of unity of invention, but required that the parent application maintain the first inventive group identified by the Examiner.  Prior regulation did state that when the applicant did not divide the application as suggested by the Examiner, the patentability examination would proceed over the first inventive group identified in the office action.

As to other aspects of the divisional process, the cited Resolution reiterates previous practice, some of which aspects we highlight as follows:

  • A divisional patent application can be filed at any time during prosecution, provided that the object claimed in the divisional patent application is different from that of the parent patent application, and from that of other divisional applications. The purpose of this regulation is to avoid overlapping between patent applications, and therefore double patenting for the same subject matter.
  • A divisional patent application cannot be further divided, as any divisional patent application must derive from the initial parent patent application.
  • Once the divisional is accepted for prosecution, the amendments to the claims cannot reintroduce matter from the parent patent application, or from other divisional patent applications derived from the same parent application. Likewise, the claims of the parent patent application cannot be amended to include subject matter from any divisionals derived from said parent patent application. Any amendments in this regard can only be filed if requested by the CPO.
  • A divisional patent application is subjected to the payment of the filing official fees, and those corresponding to each claim in excess of number 10. Nonetheless, the official fees for requesting examination are payable according to the moment in which the divisional is filed: i) if filed prior to the formalities examination of the parent patent application, examination fee is payable within the six-months period after publication of the divisional application, as prescribed by our IP Law; ii) if filed during the substantive examination stage of the parent application, the examination fee must be paid when filing the divisional application.

Should you wish to broaden the above information or discuss any particular case, please feel free to contact us.

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