By means of Resolution No. 3719 of 2 February 2016, the
Colombian PTO has modified some procedures in relation to the
conversion, division and merger of patent applications and the
requirements for substantive examination. Therefore, patent
applicants from here on out, will have to keep the following in
The applicant may request a conversion, division or
fusion of its application at any time during the prosecution and up
until the PTO´s final decision even on appeal.
When the applicant requests the conversion of a patent
of invention to a utility model patent during the prosecution, it
will not be necessary to pay the official fee for examination of a
utility model, as this fee will be covered by the one already paid
for the patent of invention. A new payment will only be
needed if a new examination is required for the utility model.
The division of an application may be presented at the
request of the PTO or a by initiative of the applicant. If
the PTO requires the division, but the applicant does not present
it, the PTO will only consider and examine the first inventive
group identified in the original application.
The applicant may only request the division of an
initial application. The PTO will not allow the applicant
to request the division of an already divided application.
The divisional request will be studied according to the
stage of the prosecution in which the parental application is at
From now on, in order file a divisional the original
claims must also be presented exactly as they were in the parent
application and two fees must be paid; the fee for filing
a divisional and the fee for examination of the divisional. To
modify the filed divisional a section with the modifications must
be included and the modification fee must be paid.
Regarding the patentability examination procedure, when
a modification is made to the claims or the description in response
to the PTO´s office action indicating that the application
does not meet the patentability requirements, a fee payment must be
made for a new patentability exam. The PTO may carry out
up to two new patentability examinations, if this does not exceed
18 months counted from the publication of the application of the
patent of invention and 9 month from the publication of a utility
In particular, the possibility of up to three
patentability examinations represents a huge change in the
Colombian patent practice since from now on the applicants have the
opportunity to consider different strategies and file further
arguments before the issuance of a final decision.
Nevertheless, in order to take advantage of this new regulation, it
is advisable that applicants pay the first patentability
examination close to the publication of the application, rather
than close to the expiration of the six available months, so that
there is more time, in case a second or third examination is
Marketing Authorization (MA) process in Mexico involves the direct or indirect participation of IP authority.
While it is true that each stage of the Marketing Authorization process includes particular steps, most of them have well-stablished guidelines; however, the stages related to IP rights are still under refinement.
In order to understand the relationship between actual IP rights and the MA prosecution process, Clarke Modet & Co offers wide range solutions from the IP point of v
Directed to in-house patent and legal professionals of pharmaceutical companies and their subsidiaries, to understand the relationship between IP rights and the market authorization prosecution process for a drug in Mexico.
IP services during Marketing Authorization (MA) process in Mexico:
Background: Search of patent documents related to a drug, Linkage system
Processing: Filling response to office actions from COFEPRIS related to IP matters
Monitoring: Importations and exportations vigilance
El 27 de diciembre de 2016, fue publicado en el Diario Oficial de la Federación un Acuerdo que modifica lineamientos para el uso del Portal de Pagos y Servicios Electrónicos (PASE) del Instituto Mexicano de la Propiedad Industrial (IMPI), en trámites de solicitudes de marca y aviso comercial.
Recently the Nice International Classification of Products and Services, a system used to categorize trademark applications, has been updated once again, with the entry into force of the 11th Edition on January 1, 2017.
Under the Mexican Trademark Law there is no obligation to use a trademark until renewal time is reached in the 10th year as of the filing date of the registration to be renewed and when filing the application for renewal it is only necessary to declare under oath that the mark has been used during a term of the last three years.
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