Merger of two or more applications as an act unappealable by opponents during the processing of a patent or utility model

The possibility of merging two or more patent or utility model applications is provided for in Article 37 of Decision 486 of the Andean Community Commission. This Article does not establish a preclusive deadline for submitting a merger request but rather allows that this request be submitted at any time during the processing. The cited Article also requires that the merged specification does not imply an extension of the subject matter disclosed in the specifications of the originally filed applications and that it complies with the requirement of invention unity.

Although mergers are covered by Decision 486, they have been rarely used by applicants in Peru, so it is possible to state that there are few rulings issued by the Authority on this matter, especially in cases in which opposition to the registration of a patent or utility model has also been raised.

Thus, in the case Mecánicos del Plástico SAC v. Alvaro Ramirez et al., the latter filed a request to merge their utility model applications processed under Files No. 1124-2021, No. 1126-2021 and No. 1418-2021, in response to the opposition filed by Mecánicos del Plástico SAC against each of the applications. The request was accepted by the Patent Office, in response to which Mecánicos del Plástico SAC. filed an appeal alleging that the merged specification did not comply with the requirements established in Article 37 abovementioned and that, furthermore, it has the right to question, before the conclusion of the proceedings and the granting of the utility model registration, the fact that the Patent Office had accepted the merger request, since such fact left it undefended. The appeal was rejected by both the Patent Office and the Administrative Court on the following grounds:

(i)        It is not possible  to reopen the opposition stage during the processing of a patent or utility model application, even if the applicant has submitted an amendment to the specification or claims or has submitted a merger request. The opposition stage ends with the applicant's response to the opposition, so the opponent is not authorized to file a reply to that response or to appeal the Patent Office's decision accepting a merger request or the amendment of the set of claims.

(ii)     The merger of two or more patent or utility  model applications  does not leave the opponent undefended, as the opponent has the possibility of questioning the merger request when filing an appeal against the Patent Office’s final decision granting the patent or utility model.

(iii)    The merger of two or more applications is not an appealable act because the General Administrative Procedure Law (Law 27444) states that the joinder of two or more proceedings is an unappealable act.

Therefore, based on the case Mecánicos del Plástico SAC vs. Alvaro Ramirez et al., it can be concluded that the current criterion of both the Patent Office and the Administrative Court is to consider that a merger request is an unappealable act during the processing of the patent or utility model application.