Barreda Moller writes...

The Patent Office’s duty to notify the Examiner’s objections to Applicants

The Patent Office is granted certain discretion in regards with the notification to Applicant. However, said discretion extends to the notification of Technical Reports but in a limited manner, as we explain further in the lines below.

Our legislation states the following:

“If the competent national office finds that the invention is not patentable or fails to comply with any one of the requirements for the grant of the patent stipulated in this Decision, it shall notify the applicant accordingly. Applicant shall respond to such notification within sixty days from the notification date. This period may be extended once for a period of thirty additional days.

The competent national office may notify applicant two or more times, pursuant to the preceding paragraph, should it deem such notifications necessary for patentability examination purposes.

If applicant fails to file an answer to the notification within the stipulated period or if, despite its explanations, the impediments to the grant of the patent continue to exist, the competent national office shall deny that patent.”

The current Patent Office’s interpretation is that they are only compelled to notify the first Technical Report. Accordingly, the second Technical Report is usually notified together with the Resolution that grants –totally or partially- or denies the patent. However, prior to issuing a resolution denying the patent, the Office usually issues a notification with the conclusion of the second Technical Report. We have estimated that the Authority takes 5 working days to issue its decision; therefore, when receiving such notification, it is possible to request a copy of the second Technical Report. Since amendments may be filed at any moment during prosecution of the application, this practice allows Applicant to answer the Examiner’s objections.

However, it is important to consider that if a new objection arises in the second Technical Report and the same was not previously notified to Applicant, the Patent Office will have to notify said second Technical Report to Applicant. Accordingly, Applicant must be able to respond to the Examiner’s objections at least once. The Administrative Court can declare the nullity of a resolution if the same is based on a Technical Report that includes an objection that was not previously notified to Applicant.

Moreover, the Courts have established that if the Technical Report was made by an external Examiner, said report must be in any case notified to Applicant.

In conclusion, the rules for notification of the Examiner’s objections before finally rejecting the grant of a patent are as follows:

- A first Technical Report must always be notified.

- Further Technical Reports must be notified if they contain new objections.

- A Technical Report made by an external Examiner must always be notified. 

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