The Colombian Patent Office has issued new regulations regarding divisional applications filed as a response to unity rejections from the Patent Office or filed voluntarily. The new policy addresses the most conflictive requirements of the former guidelines, specifically with regard to voluntary divisional applications. There is also an important update with regard to the kind of subject matter that will be allowed in a divisional application as explained below.
Divisional applications as a response to unity rejection
If there are unity issues with the application, the Patent Office will notify applicants the inventive groups found in the application. Examination will usually be directed to the first inventive group identified by the Patent Office. However, if the applicant is not interested in the group for which examination is conducted, a new and different group can be chosen in the parent case which will be duly studied by the Patent Office. The applicant can also file divisional applications directed to the remaining groups identified in the office action. It is important to also note that divisional from divisional applications will not be allowed.
Voluntary divisional applications
Voluntary divisional applications must always be derived from the parent case regardless of the number of divisional applications filed. As in the above case, divisional from divisional applications will not be permitted. Voluntary divisional applications can be filed at any time of prosecution and they will be examined independently.
Subject matter in a divisional application
The claimed subject matter of a divisional application must not encompass the subject matter already claimed in the parent case. In other words, overlapping between the subject matter in a divisional application and the parent case will not be permitted. For further divisional applications, the subject matter claimed among them must also be different. The specification of the parent case will serve as support of the claimed subject matter of a divisional application.
Amendments in the parent case and a divisional application
Once a divisional application is accepted into prosecution, no amendments will be allowed to include subject matter already claimed in the parent case or any other divisional application. Likewise, amendments made to the parent case will not be allowed if they reintroduce subject matter already claimed in a divisional application.
PPH in divisional applications
Divisional applications can also benefit from the PPH, in which case, the request must be filed before the first office action is issued in the parent case.
As it can be seen, the new guidelines will allow applicants to effectively cover their inventions by means of divisional applications since additional subject matter will be allowed to be claimed in a divisional application. The filing of additional divisional applications will allow to maximize the patent protection of applicant’s inventions in our country.
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