Under the Andean Community, the patent application may only relate to one invention or to a group of inventions so related as to constitute a single inventive concept. This is called “unity of invention”.
Requirements of an application under the Andean Community:
The application for a patent shall be filed with the competent national office, and no member country shall impose requirements of form on the patent application that are additional to or different from those provided for in the Decision. It shall contain the following:
- The request: this request shall be set down on a form, and shall contain:
- A request that a patent be granted
- The name and address of the applicant
- The nationality or domicile of the applicant. Where the applicant is a legal entity, its place of incorporation shall be specified.
- The name of the invention
- The name and domicile of the inventor where he is not the applicant
- Where applicable, the name and address of the legal representative of the applicant
- The signature of the applicant or of his legal representative; and
- Where applicable, the date, number and office of filing of any application for a patent or other title of protection that may have been filed or obtained abroad by the same applicant or his principal and that refers entirely or partly to the same invention as is claimed in the application field in the member country.
- The description: it shall disclose the invention in a manner sufficiently clear and complete to be understood and for a person skilled in the corresponding technical field to be able to carry it out. The description of the invention shall state the name of the invention and include the following information:
- The technological sector to which the invention relates or applies;
- The previous technology known to the applicant that may be useful for understanding and examining the invention, and references to earlier documents and publications relating to the said technology;
- An account of the drawings, if any have been filed;
- A description of the best method known to the applicant of carrying out the invention or putting it into practice, with the use of examples and references to the drawings where the latter are relevant; and
- A mention of the way in which the invention meets the condition of industrial applicability, if this is not clear from the description or the nature of the invention.
- One or more drawings, where necessary for the understanding of the invention. Those shall be considered an integral part of the description.
- When the invention relates to a product or process involving biological material, and the invention cannot be described in such a way as to be understood and carried out by a person skilled in the technical field, the description shall be completed with a deposit of the said material.
- The deposit shall be made not later than on the filing date of the application in the member country or, where applicable, on the filing date of the application the priority of which is claimed.
- Deposits effected with an international depositary authority recognized under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977), or with another institution recognized by the national office competent in that connection, shall be considered valid.
- In such a case, the description shall state the name and address of the depositary institution, the date of deposit and the deposit number assigned to it by the institution. The deposit of biological material shall be valid for the purposes of the grant of a patent only if it is made in such a way that any interested party may obtain samples of the material not later than the 18-months period given for the file to be declared public.
- One or more claims: the claims shall define the subject matter to be protected by the patent. They shall be clear and concise and entirely supported by the description.
They may be either independent, when it defines the subject matter to be protected without reference to another earlier claim; or dependent, when it refers to two or more earlier claims.
- The abstract: it shall consist of a summary of the technical disclosure contained in the patent application. The abstract shall serve only for the purposes of technical information and shall in no way influence the interpretation of the scope of protection afforded by the patent.
- Such powers of attorney as may be necessary
- Proof of payment of the prescribed fees
And, where applicable:
- A copy of the access contract where the product or processes for which a patent is sought have been obtained or developed from genetic resources or products derived therefrom of which any of the member countries is the country of origin; and/or
- A copy of the document accrediting the licensing or the authorization of the use of the traditional knowledge of the indigenous, Afro-American or local communities of member countries where the products or processes for which protection is sought have been obtained or developed from such knowledge of which any of the member of its amendments and implementing regulations as are in force; and/or
- The certificate of deposit of biological material; and/or
- A copy of the document attesting the assignment of the right to the patent by the inventor to the applicant or to his principal.
In case that the competent national office has reasonable doubt concerning some element of the application in the course of the processing of the application, it may demand that the necessary evidence be filed.
Date of receipt of the application: the filing date thereof, provided that, at the time of receipt, it contains at least (i) a mention that the grant of a patent is applied for, (ii) the particulars identifying the applicant or the person filing the application or which enable the competent national office to communicate with that person, (iii) a description of the invention, (iv) drawings if they are relevant and (v) proof of payment of the prescribed fees.
Failure to comply with any of the requirements specified above shall cause the competent national office to regard the application as not having been accepted for processing, and no filing date shall be assigned to it.
Changes to applications
- What if I need to amend my application?
The applicant for a patent may request that his application be amended at any time during the processing thereof. The amendment may not involve any broadening of the protection that would have been accorded to the disclosure contained in the initial application. Any clerical error may be corrected in the same way.
- Conversion of an application:
At any time in the processing of the application, the applicant may request that it be converted into an application for a utility model patent, which shall only be allowed when the nature of the invention permits. It may be filed only once, and the converted application shall retain the filing date of the original application.
The conversion of the application may be suggested by the Competent office too, at any stage in the processing thereof, and may also charge an additional fee for the filing of conversion requests.
In that case, the applicant may accept or reject the suggestion, on the understanding that processing of the application in respect of the type of rights originally applied for shall continue if it is rejected.
- Division of an application:
As it was mentioned before, a patent should only relate to one invention or to a group of inventions so related as to constitute a single inventive concept; which is called “unity of inventions“.
If a patent application does not fulfill this requirement, it shall be dismissed. For this not to happen, the applicant may, at any stage in the processing, divide his application into two or more divisional applications, but none of them may involve any broadening of the protection accorded to the disclosure contained in the original application.
The competent national office may require the applicant to divide the application if it does not fulfill the condition of unity of invention at any stage in the proceedings.
Towards the dates…
- Every divisional application shall have the same filing date as the original application, and the same priority date where applicable.
- Where multiple or partial priorities have been claimed, the applicant or the competent national office shall specify the priority date or dates corresponding to the subject matter that should be covered by each of the divisional applications.
For the purposes of the division of an application, the applicant shall file such documents as may be necessary to make the corresponding divisional applications complete.
- Merging of two or more applications:
The applicant may, at any stage in the proceedings, merge two or more applications into one, but that may not involve any broadening of the protection that would have been accorded to the disclosure contained in the initial applications.
Not merging shall be allowed where the merged application would include inventions that do not meet the condition of unity of invention. The merged application shall have the same filing date and the same priority date or dates where applicable, as have been accorded to the subject matter contained in the initial applications.
Procedure up to grant:
Processing of the Application:
After 30 days following the filing date of the application, the competent national office shall examine whether it fulfills the conditions of form provided for in the Decision:
If application does not fulfill the conditions:
- The office shall notify the applicant, so that he may meet those conditions within a period of two months following the date of notification. A party can request to extend that period once by an equal amount of time.
- If he meets the conditions, procedure keeps going.
- If he fails to meet the conditions, the application shall be considered abandoned, and its priority shall be lost.
If application fulfills the conditions,
- The file shall be declared public, it is inspected, and the competent national office shall order its publication, in a period of 18 months after the filing date of the application
After publication, any person with a legitimate interest may file one reasoned opposition contesting the patentability of the invention within a period of 60 days. A party can request an additional period of 60 days for the substantiation of the opposition
- The opposition is notified to the applicant, so that he may present his arguments, submit documents or revise the claims or description of the inventions if he considers it relevant or convenient within a period of 60 days. The competent national office can grant an additional period of 60 days if requested by a party.
The applicant may request publication of the application at any time after the completion of the examination.
- Within a period of six months, the applicant shall request that the invention be examined for patentability, whether there is a filed opposition or not.
- If that period expires without the applicant’s request, the application shall lapse.
- The competent national office can find that the invention is not patentable or does not comply with one of the requirements of the Decision, which will be notified to the applicant for him to respond within a period of 60 days, and can be extended once for a period of 30 additional days.
- If the applicant fails to respond to the notification within the periods specified or if there are still obstacles to grant in spite of the response, the competent national office shall refuse the patent.
- The competent national office may solicit reports from experts, from scientific technological bodies considered suitable or from other industrial property offices (if it fits), to have their opinion on the patentability of the invention.
- The competent national office can also request the applicant to submit some documents related with one or more filed foreign applications within a maximum period of three months. The documents requested by the competent national office may be:
- A copy of the application; of its findings on novelty and patentability;
- A copy of the patent or protection title given on the basis of that application;
- A copy of any judgement or decision by which the foreign application has been:
- Rejected,
- Denied,
- Cancelled, or
- Invalidated
- If the applicant fails to submit the documents requested, the competent national office shall refuse the patent.
If final examination is favorable, the patent shall be granted.
After the Application:
Acts after the grant:
- The owner of the patent may ask the competent national office to amend the patent in order to reflect a change in the name, address, domicile or other particulars of the owner or inventor, or to alter or limit the scope of one or more of the claims. He may likewise request the correction of any clerical error in the patent. The dispositions about the amendment or correction of an application shall apply as appropriate.
- The owner of the patent may renounce to one or more claims of the patent or the patent as a whole in a declaration addressed to the competent national office. Renunciation shall be effective as from the date of receipt of the said declaration.
- The owners of a patent may divide it into two or more divisional patents. The provisions on the division of an application shall be applicable as appropriate.
The competent national office may provide for fees to be charged for acts performed after the grant of the patent.
Refusal, Lapse and Invalidity of the Patent:
Invalidity of the Patent:
The competent national authority shall decree the absolute invalidity of a patent at any time, either ex officio or at the request of any person, where:
- The subject matter of the patent does not constitute an invention.
- The invention does not fulfill the requirements of patentability.
- The patent has been granted for a non-patentable invention, in the aforementioned terms (see Art. 20 – Dec. 486/00).
- The patent does not disclose the invention.
- The claims included in the patent are not fully supported by the description.
- The patent as granted contains broader disclosure than the original application which has the effect of extending the scope of protection.
- Where applicable, a copy of the access contract has not been filed where the products or processes to which the patent application relates have been produced or developed with genetic resources or derived products of which any member countries is the country of origin.
- Where applicable, a copy of the document evidencing the licensing or authorization of the use of traditional knowledge of the indigenous, afro-american or local communities of the member countries has not been filed where the products or processes for which protection is sought have been produced or developed on the basis of such knowledge of which one of the member countries is the country of origin
- The causative factors of absolute invalidity provided for in the national legislation on administrative acts are present.
Where the causes referred to above affect only one of the claims or parts of a claim, invalidity shall be declared only in respect of those claims or those parts of the claim, as the case may be.
The patent, the claim or the part of the claim that has been invalidated shall be deemed null and void as such as from the filing date of the patent application.
Relative invalidity: the defects in administrative acts that have not brought about absolute invalidity, shall result in relative invalidity. In such cases, the competent national authority shall declare invalidity within the following five years counted from the date of the grant of the patent, as provided in national legislation.
Cancellation of a patent:
Where a patent has been granted to a person not entitled to such grant, the competent national authority may cancel a patent.
Who can brought an action for cancellation? The action for cancellation may only be brought by the person to whom the right to the patent belongs.
Prescription Periods: Five years following the date of grant of the patent, or two years following the date on which the person to whom that right belongs became aware of the exploitation of the invention in the country, whichever period expires first.
Arguments against the action for cancellation: the competent national authority ruling on a case of invalidity shall inform the owner of the patent so that he may present such arguments and submit such proof as he may consider fit.
If that authority is the competent national office, the arguments and proof shall be submitted within the two months following notification. The person concerned may apply for an extension for two further months following notification before the provided period expires.
On the expiry of the aforementioned periods, the competent national office shall rule on the invalidity of the patent, and the parties shall be informed accordingly in a resolution.
The competent national authority may, where this is necessary for a ruling on the invalidity of a patent, request the owner of the patent to submit one or more of the following documents relating to the patent to which the proceedings themselves relate:
- A copy of the foreign application wholly or partly to the same invention as that being examined
- A copy of the findings of novelty or patentability examinations carried out in relation to that foreign application
- A copy of the patent or other protection title that has been granted on the basis of that foreign application
- A copy of the patent or other protection title that has been granted on the basis of that foreign application
- A copy of any judgement or decision by which the foreign application has been rejected or denied
- A copy of any judgement or decision by which the patent or other protection title granted on the foreign application has been cancelled or invalidated.
Lapse of the patent:
In order to keep the patent in force or maintain a pending patent application, as the case may be, annual fees shall be paid as provided by the competent national office. Annual fees shall be paid annually in advance.
The due date of each annual fee shall be the last day of the month in which the application was filed. Two or more annual fees may be paid in advance.
An annual fee may be paid within a six-months period of grace following the starting date of the corresponding annual period, provided that the prescribed surcharged is paid at the same time. During the period of grace, the patent or patent application shall remain in full force.
Failure to pay an annual fee under this provisions shall cause the patent or patent application to lapse automatically.
