Colombia: a true step towards patenting procedure optimization

Sara Isabel Tortosa –  Partner at Tortosa Gadea Lawyers
Ana A. García Torralba – Junior associate attorney at Emilio García y Abogados Asociados

Colombia set, as an objective, the consolidation of an effective and reliable patent system. This objective has been reached as it has been statistically proven. According to the Colombian Intellectual Property Office, namely the Industry and Commerce Superintendency (SIC), the whole patent procedure now takes, depending on the technical field, from 1 to 3 years, which entails an improvement in comparison to the last decades, where a patent application could last more than 5 years.

In such a context, it is worth recalling the latest developments made by the Colombian patent system in order to reduce both filing fees and decision times.

However, improvements regarding national legislation is not the only driving factor. Indeed, the signature of several international agreements with other national and regional patent offices has meant significant advances in improving patent proceedings and services. Through these agreements, Colombia has contributed to the economic development, offering greater trading opportunities to Micro, small and medium-sized enterprises (SMEs).

All these measures have effectively increased the number of patent applications (between 2011 and 2016, SIC reported an increase of 345% in the number of patent applications) and it is expected to continue growing over the next years.

Protecting your inventions in Colombia

After drafting a patent application, you have to decide where to file it. A patent granted by the Intellectual Property Office of Colombia, provides only national protection, due to the territorial nature of IPRs.

In order to acquire protection in multiple territories, investors and entrepreneurs as the European SMEs may submit their applications through the Patent Cooperation Treaty system; which Colombia joined on February, 2001.

The PCT is an international cooperation agreement, that enables to file a single “international” or “PCT” patent application valid across all the countries/regions in the PCT system, (see the full list of the 152 PCT members here), instead of filing several separate regional/national patent applications requiring multiple tasks such as translations and even taxes.

Keep in mind that whether or not the patent is finally granted remains under the exclusive competence of each national or regional intellectual property office. Each office will examine the application according to their national or regional laws. Thus, even if the application is international, the granting process, decision and its effects remain national.

The PCT is not only a cost-effective route to protect IPRs internationally. It will also allow to save and “buy time”, since the applicant gets up to 18 additional months to delay both:

  • the decision of whether or not to pursue patent protection and;
  • the substantial costs of the patent procedure arising in the national phase: appointing a foreign attorney, paying official fees and translate the application and documents required to the official language (when necessary). Take into account that some IP Offices offer reduced fees for SMEs.

This additional period may be crucial for European SMEs seeking to expand their own market, since it allows them to adequately evaluate where to pursue patent protection, and get more information regarding the novelty and the technical value of  their invention.

Colombia joins the Global Patent Prosecution Highway (GPPH)

Examining patent applications is a complicated task. Patent application are technical and complex documents, the examination carried out by patent examiners is exhaustive and the workload important. These were one of the main reasons that led to the creation of the so-called Patent Prosecution Highway (PPH): they constitute a work-sharing initiative between different IP offices, allowing patent applicants to request accelerated processing in the national phase.

The Global PPH (GPPH) Pilot Program launched in 2014, involves 24 patent offices around the world. Colombia, effectively joined on July, 2017, being the first and only (so far) adherent from Latin America. Under the GPPH, applicants can benefit from an accelerated examination through a simple procedure at their request.

To that end, patent examiners in a national or regional office are allowed to reuse the documents issued in the framework of a prior exam accomplished by another participating PPH office such as the Written Opinion issued by the international search and examination authorities.

The main goal of this procedure is to provide a fast-track prosecution and ease search and examination tasks, which directly benefits stakeholders. However, these documents are not binding, thus the final decision about whether or not to grant the patent rests within the hands of the national IP Office where the application has been filed according to its own applicable law.

It is, therefore, to be expected that such an agreement will be a boost for business, innovation and commercial growth of European SMEs. Indeed, shorter timelines stimulates SMEs’ creative intellectual endeavor for the benefit of public interest.

In order to be eligible for the GPPH, the applicant shall comply with the two following indispensable conditions:

  1.   A patent application must have been already filed before at least two GPPH participating offices by the applicant.
  2.   One or more claims should have already been deemed as patentable by any of the other offices involved.

The Global PPH pilot program superseded bilateral PPH pilot programs between the Colombian patent office and the other PPH partner offices. Participating Offices of the Global PPH pilot are listed here.

Since it is a pilot program, the limit of patent application before SIC is of 30 per month or 300 per year.

Benefits arising from the use of GPPH:

  • Effective reduction of patent pendency, (the amount of time between the filing date and the final decision’s day granting or refusing the patent).
  • Shortening of the examination period, because of the possibility to reuse search/examination history.
  • Allows to save time, money and effort for both applicants and GPPH participating offices.
  • Harmonization of qualifying requirements.
  • Improvement in the quality, since the previous work serves: as a basis for an accurate assessment of the patentability criteria; and also as an exchange of good practices between offices.

Colombia’s accession to the GPPH, is a clear sign of the active role that the country wishes to play in the international scene, in order to strengthen investors’ confidence. 
If your company wishes any further detailed information about protecting your IPRs in Latin America, do not hesitate to visit the Latin America IPR SME Helpdesk website or to contact our Helpline, it is free, fast and confidential.

Get your patent grant quicker with the Pacific Alliance and PROSUR PPH

Rebeca Nieto
IP Expert at Latin America IPR SME Helpdesk

Over the past few years, Intellectual Property Offices around the world have been busy preparing and negotiating Patent Prosecution Highways (PPH) agreements.

Better known by its abbreviation, the PPH is a system of bilateral and multilateral agreements particularly aimed at reducing the costs and time of patent examinations among applicants and participating patent offices. For doing so, the system enables an applicant with allowable/ granted claims in a patent application of an Office of Earlier Examination (OEE) to obtain an accelerated process examination of sufficiently corresponding claims in applications filed (but not yet examined) in other offices -Office of Later Examination (OLE)-.

It must, however, be noted that under PPH the OLE agrees to expedite the examination process by using the data and information provided by the OEE; but following the territoriality principle of patents, it reserves the right to grant or deny the patent.

In Latin America, two regional key networks have been created, namely, Pacific Alliance and PROSUR.

On July 1st, 2016 the PPH Pilot Program of the Pacific Alliance, made up of Chile, Mexico, Colombia and Peru, came into force. Some months later, on September 15th, the PPH Pilot Program of PROSUR, formed by Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay, came into force. Nonetheless, Brazil adherence to the PPH was on December 19th, 2016, while the final entry into force of Ecuador still  awaits the internal approval of its Government.

These Pilot Programs are expected to last 3 years, and renewable for an additional one. As we will see below, their implementation is carried out according to the guides prepared by the participating Industrial Property Offices, which establish the requirements, conditions and procedures to participate in the PPH Pilot Program.

For the purpose of giving certain flexibilities to the applicants, both networks decided to follow the “Mottainai” and the “PCT- PPH” modalities.

According to the PPH MOTTAINAI modality, an applicant can request to expedite its patent examination process at OLE using the results of the OEE, regardless of the office in which the first deposit occurs, provided that the OEE and OLE have signed a PPH MOTTAINAI agreement. By eliminating the directional requirement of the original PPH model, this alternative relaxes the requirements related to the order in which the applications were filed and the priority which they claimed.

Regarding the PCT- PPH, the OLE could utilize the positive results obtained in the PCT international phase to request accelerated processing in the national phase. In particular, in this modality OLE´s patent examiners can use the following work products:

  • the written opinion of the International Searching Authority (ISA),
  • the written opinion of the International Preliminary Examining Authority (IPEA), or
  • the international preliminary examination report issued within the framework of the PCT, subject to certain conditions.

In this region, WIPO has designated INPI (Brazil) and INAPI (Chile) as ISA/IPEA offices. According to this, the country members of the Pacific Alliance and PROSUR may benefit from the international PCT work elaborated by those offices.

To get a closer look at the system, let’s now see how the Pacific Alliance PPH system has worked for the Mexican inventor Sergio Fernando Grijalva, who was the first applicant within the PPH of the Pacific Alliance in filing and obtaining a patent granted.

His application was filed on March 3rd, 2016 in the National Institute of Industrial Property (INAPI). Once the PPH was requested, it was necessary to check if the application met the requirements set in the INAPI- IMPI’s guide to participate, which are:

  • The Chilean and the Mexican application must be equivalent, which means that they must have the same initial date, either the same priority date or the same filing date.
  • The corresponding application must have been examined substantively and have one or more claims considered by IMPI as patentable/ allowable.
  • All claims submitted for INAPI’S examination -as originally filed or as modified- must sufficiently correspond to one or more of the claims found patentable/ allowable by IMPI.
  • The application filed before INAPI shall has been published in the Official Gazette.
  • The substantive examination of the application of INAPI has not yet begun. In other words, the PPH must be requested before the examiner is appointed.

In the present case, the Mexican applicant was required to modify his application before INAPI as to make its claims sufficiently corresponding to the ones granted by IMPI. Thanks to this correction, the research and examination results done by IMPI could be used during INAPI´s patent prosecution.

As result of the prosecution of this patent by the PPH, the substantive examination process was executed in less than 3 months, which contributed to grant the patent in less than 12 months, rather than the 36 months that non-contentious patent application may take.

As we have seen, the existing PPH networks in Latin America can contribute effectively to speed up the substantive examination process of the participating offices, by avoiding the repetition of unnecessary administrative actions, while at the same time reduce related institutional and applicants’ costs. Moreover, and not previously mentioned, using these services do not, as a general rule, require additional fees.

For all of the reasons above mentioned, companies and inventors are encouraged to benefit from the existing PPH schemes. As for this purpose, if you are seeking patent protection internationally, you are highly recommended to verify the PPH agreements of those countries you are planning to expand your patent protection, as well as check out the modalities they adopted (i.e. “Mottainai” and “PCT- PPH”), as they can provide you an additional chance to successfully accomplish your patent registration in Latin America.