On February 2, 2016, the Colombian PTO (Superintendence of
Industry and Commerce – SIC) published Resolution 3719, which
regulates some of the articles of Decision 486, a common IP regime
for Bolivia, Colombia, Ecuador and Peru – regarding the
conversion of applications, the filing of patent divisional
applications and the patentability examination.
Resolution 3719 establishes that a
request for: i) the conversion of an application; ii) the division
of a patent application into two or more divisional applications,
or iii) the merger of two or more patent applications into one, can
be filed at any time during the proceedings, until the resolution
deciding on a request for reconsideration of a final decision
(either granting or rejecting) has been issued by SIC.
Therefore, Resolution 3719 clarifies articles 35, 36 and 37 of
Decision 486, which state that a request for the conversion,
division or merger of patent application respectively can be filed
"at any time during the proceedings."
"conversion of an application",
Resolution 3719 establishes that said term refers to the conversion
of a patent into a utility model application and vice versa, and of
a utility model to an industrial design application.
When a request for the conversion of a patent application into a
utility model application is filed after the deadline to request
the examination for a utility model has expired, the utility model
examination fees have to be paid when requesting the conversion.
The same applies when requesting the conversion of a utility model
application into a patent application.
With regard to divisional applications,
Resolution 3719 states the following:
If the applicant does not divide a
patent application as suggested by SIC when the application does
not comply with the unity requirement, the patentability
examination will be only performed on the first inventive group
identified by the examiner.
A divisional application cannot be
the parent application for a further divisional, i.e., a divisional
application cannot be further fractioned into one or more
When a divisional application is
filed voluntarily by the applicant, the division will have to be
done "literally", taking into account the consecutive
numbering of the claims. Additionally, the description will have to
be in agreement with the division of the claimed subject
Resolution 3719 establishes that, if
with the response to a patentability examination
report, the applicant: i) amends the set of claims; ii)
amends the description; iii) or files a new set of claims, the
Colombian PTO could, if deemed necessary, issue up to two more
examination reports. However, the patentability examination must be
finished after 18 months counted from the publication date (9
months for utility models).
Additionally, it is established that in any of the cases i-iii
described above, the official fees corresponding to the substantive
examination must be paid again.
Originally published 29th March 2016
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guide to the subject matter. Specialist advice should be sought
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