Barreda Moller writes...

Change on Patent Practice?

Decision 486 of the Andean Community and its predecessors, Decisions 344, 313, 311, allow for the amendment of the claims either as a response to an opposition, as a response to the examiner’s report, or by decision of applicant, at any time during the prosecution of the patent application. The practice followed by the Patent Office and by the Administrative Court of allowing the filing of a new set of claims even on appeal was abruptly amended on October 2008, as consequence of the decision passed by the Administrative Court in connection with a particular case, stating that the “procedure” ends once a decision has been passed by the Patent Office, partially or totally denying patent protection, and therefore, applicant is not entitled to file a new set of claims on appeal, even if the purpose is to accommodate the claims to what has been approved by the examiner or the Patent Office.

On a decision passed by the Transitory Civil Chamber of the Supreme Court, dated 15 October 2010, the Judiciary has declared that:

  1. Decision 486 of the Andean Community, Article 34, allows applicant to request  the amendment of an application at any moment during its prosecution, as long as such amendment does not imply the extension of the protection originally required,  the Court declaring that such amendment, even if exceptional, is also acceptable in second instance, on appeal. The rationale is that the administrative procedure ends when the final decision is passed.
  2. An applicant that, when appealing a decision passed by the Patent Office refusing patent protection, files a new set of claims, is entitled to have such new set of claims accepted by the authority and taken into consideration when deciding on patentability of the invention.
  3. The Civil Chamber of the Supreme Court has also reaffirmed that when the Administrative Court, on appeal, requires for an examiner’s report on patentability, such examiner’s report has to be informed to applicant who will need to receive a specific term to respond and eventually file a new set of claims in its effort to obtain patent protection.

Unfortunately, the decision passed by the Supreme Court has not been defined to be a precedent of mandatory compliance, obliging the Patent Office only in the particular case where the decision was passed. Our office will make efforts before the Administrative Court in order to obtain from it the recognition of the validity of such decision for future cases.

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