THE COLOMBIAN PATENT OFFICE’S PRACTICE REGARDING AMENDMENTS, DIVISIONAL, CONVERSION REQUESTS AND MERGERS
With Resolution 3719 of February 2nd, 2016, the Colombian Patent Office implemented a series of measures related to the way in which matter of divisional applications may be divided, the time when said request may be filed, and other aspects regarding amendments.
Divisional applications may be filed before a final decision is issued, that is, before the resolution which decides a potential legal recourse is issued. It is understood that a divisional application may even be requested with the legal recourse. If there is a substantive examination and in response thereto the client cancels a set of claims, a divisional of said claims may be filed later on provided that it is supported by the description.
It is not possible to file a divisional application of applications which were initially fractioned. In that case, if a divisional or an amendment is desired, it is mandatory to pay the patentability exam once again after the substantive examination provided that no more than 18 months have passed from the date of publication of the application.
If the Colombian Patent Office issues an objection requesting the division of an application and the applicant fails to comply, the Patent Office will only examine the first inventive group identified in the original application.
In addition to the application fee, when requesting a divisional application the applicant will also have to pay for the patentability exam. When requesting the conversion of an invention patent application to a utility model application after the deadline for payment of the patentability exam, the applicant must pay the additional conversion fee together with the patentability exam fee.
Likewise, if the conversion is made from a utility model application to an invention patent application. Even two patentability exam requests or substantive examinations may be issued provided that the patentability exam does not exceed 18 months.