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12 August 2013
After around 10 years, the Colombian Patent and Trademark Office (CPTO) has decided to return to allowing an applicant to modify a patent application as part of the reconsideration action available to it when reviewing the application's initial rejection. This is a welcome change. However, the amendment has not been set down in writing in any publicly available guidelines or norms; it is hoped that this situation will change in future in order to provide patent applicants with clear guidance.
Before this procedural change, a patent application could be modified only up until the CPTO issued a resolution rejecting the patent. Such resolution was subject to review by means of a reconsideration action brought by the applicant. However, the applicant could not modify the claims as part of the reconsideration action.
Although it is expected that, during prosecution, there will come a point when the applicant can no longer modify the claims and a final decision will be issued, the problem with the previous procedure was that the applicant had no warning that a resolution rejecting the patent application would be issued, as a patentability examination does not state whether it is a final examination. The CPTO was (and still is) required to issue at least one patentability examination during prosecution of a patent application, but it may issue more if it deems that appropriate. Once the applicant has responded to the first patentability examination, the applicant has no way of knowing whether the CPTO will issue another patentability examination or simply issue a resolution rejecting the patent. In addition, the generally accepted (but unpublished) CPTO practice was that if the applicant did not make substantial modifications to the claims in response to a patentability examination, and if the arguments filed by the applicant did not convince the CPTO of the invention's patentability, the CPTO would simply issue a resolution rejecting the patent without giving the applicant an opportunity to modify the claims. Considering that no modifications were previously allowed during the reconsideration action, the applicant was forced to make claim modifications during the response to the first examination in order to increase its chances of obtaining a subsequent patentability examination and receiving comments by the CPTO on the arguments filed in response to the first examination. The new procedure, under which the applicant can modify the claims during the reconsideration action, is a more patent-friendly process; it allows the applicant to know clearly the last possible procedural moment when it can modify the patent application in an attempt to obtain a grant.
The CPTO introduced this procedural change in order to address two issues:
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