In October 2016, the Patent Department of the Dominican PTO
published a new version of the guidelines for the examination of
patent applications. The guidelines, which are revised yearly, are
aimed at clarifying those legal and administrative criteria that
are considered not to be clearly defined in the Industrial Property
Law 20-00 and its Regulations.
The new guidelines introduce the following important
Regarding the criteria for the
assessment of Markush claims, the guidelines
The description must comprise at
least one example for each class of substituent. If there are no
examples of substituents, the invention cannot be reproduced.
Only heterocycles that are duly
exemplified will be accepted in the claims.
In practice, this means that examiners are currently requesting the
limitation of Markush claims to the working examples.
The characterization of chemical
compounds shall be done not only by the melting point but also by
one or more of the following methods: infrared absorption spectrum
(IR), mass spectrometry (MS), nuclear magnetic resonance (NMR) or
liquid chromatography (LC).
The biological activity for the
claimed compounds must be demonstrated by tests.
With regard to divisional
applications, the guidelines specify that the claimed
subject matter of a divisional patent application must be clearly
different from the claimed subject matter in the parent
application, in order to avoid overlapping. Additionally, when
filing a divisional application it is recommended to point out the
pages of the specification on which the claims are based.
Hence, precautionary divisional applications directed to the
original claims can still be filed. However, during the substantive
examination stage the examiner will require to limit them in order
to avoid overlapping.
The guidelines also clarify that a patent application can be
divided at any time, before a final resolution is issued.
Additionally, according to the IP Law and its Regulations, a
granted patent can also be divided in one or more patents.
The number of issued
substantive examination reports has been reduced from
three to two. However, the guidelines clarify that the Patent
Department can discretionarily issue a further substantive
examination report when deemed necessary.
Even though it is not specified in the new guidelines for the
examination of patent applications, the Dominican examiners have
started to request the filing of a "technical
abstract" explaining the advantage or technical
solution of the application compared to the closest prior art.
The request for a "technical abstract" is being
currently made in all patent applications regardless of whether the
novelty and inventive step has been acknowledged or not.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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