In September 2016, the Andean Court of Justice (ACJ), through Judicial Interpretation 612-IP-2015, clarified the legal scope of the Andean Patent Manual, reiterated the prohibition of the "ex post facto" analysis of inventive step, and established the minimum criteria for resolutions deciding on patents. The ACJ is the judicial arm of the Andean Community, a trade bloc of four countries - Bolivia, Colombia, Ecuador and Peru.
In 2007, Novartis AG filed a patent application related to a process for obtaining an organic compound at the Colombian Superintendence of Industry and Commerce (SIC). Thorough resolution 40626, the application was rejected by SIC in 2012 due to lack of inventive step. Novartis then filed an appeal against the rejection resolution, but the rejection was confirmed by the Superintendent of Industry and Commerce through resolution 35270.
In view of this, Novartis submitted a Nullity Action of resolutions 40626 and 35270 to the Council of State. In February 2015, the First Section of the Administrative Litigation Chamber of the Council of State decided to stop the proceedings and request a Judicial Interpretation to the ACJ of some of the plaintiff´s arguments in the nullity action.
The most important rulings by the ACJ in Judicial Interpretation 612-IP-2015, which are binding upon the judges deciding on this case, are:
- The Andean Patent Manual - a common manual on the processing of patent applications in the Andean community countries - is a non-binding source of information for patent examiners. Some of its sections could be binding if the ACJ includes them in judicial interpretations for specific cases.
- The hindsight or "ex post facto" analysis of inventive step is not allowed. Therefore, when combining documents cited in the search report, the examiner should always bear in mind that the documents retrieved in the search have necessarily been obtained with foreknowledge of the subject matter of the invention. Additionally, the examiner should try to consider the overall state of the art confronting the person skilled in the art before the applicant's contribution, and give fair weight to relevant arguments or evidence submitted by the applicant.
- The administrative acts rejecting a patent application must set out the factual and legal grounds for the rejection, which must be clear and unequivocal, and at least refer to the relevant background.
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