In brief: patent prosecution in Colombia

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

As a general rule and pursuant to the TRIPS Agreement, Colombian authorities have to provide patent protection for inventions in all fields of technology (article 14 of Decision 486). However, there are certain limited exceptions to that rule either in the form of subject matter that is not considered an invention (article 15 of Decision 486) or that is excluded from patentability (article 20 of Decision 486). Business methods are not considered inventions and medical procedures (for treatment or diagnosis) are expressly excluded from patentability. Software as such is not considered an invention; it is protected by copyright (Andean Decision 351 of 1993). However, computer-implemented inventions are patentable insofar as they provide a technical contribution. According to the position of the Andean Court of Justice (ACJ) and article 21 of Decision 486, use and second-use claims are not patentable subject matter, not even if drafted in the Swiss-type format.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The right to a patent belongs to the inventor (individual) and may be transferred to third parties by written assignment or succession in title (to an individual or a corporation). There is a presumption of assignment for inventions developed within the framework of an employment relationship or performed by an independent contractor (article 539 of the Colombian Commercial Code and article 29 of Law 1450 of 2011). A copy of the employment contract will suffice. Multiple inventors share the right to patent the invention in the same proportion unless otherwise agreed. For joint ventures, the patent can be assigned jointly to each company constituting the joint venture in the proportion previously agreed. As a joint venture is not considered a legal person, it may not be a holder of a patent right (article 22 of Decision 486). Any of the companies in a joint venture or co-owners may initiate a patent infringement lawsuit against third parties, regardless of the percentage of the patent held (article 238 of Decision 486).

Patent ownership is officially recorded when the assignment document from the inventor to the applicant is filed with the patent application before the Patent Office. Ownership is transferred upon execution of the assignment documents.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

In practice, the Colombian Patent Office (CPO) averages between 24 and 28 months to issue a non-final decision after filing.

The costs of filing, prosecuting and obtaining a patent will range, depending on the complexity of the case and the amount of office actions, between US$2,500 and US$8,000 over the course of the prosecution, including official and professional fees.

Are there any procedures to expedite patent prosecution?

Neither Decision 486 nor local regulations provide accelerated procedure options. However, a diligent prosecution practice may reduce the timeline of the application significantly, for example, by requesting examination shortly after publication takes place, by modifying the application excluding use claims, method of treatment claims, or any other non-patentable subject matter. It is also convenient to interview examiners in charge of the case and discuss alternatives to expedite prosecution and avoid additional examinations. For PCT cases filed in Colombia, publication typically occurs about one month after it is filed (provided no formal examinations are issued).

Various Patent Prosecution Highway (PPH) options exist to speed up examination based on counterpart applications filed in participating intellectual property offices. The CPO has signed several bilateral PPH agreements with different Patent Offices in the world (the US Patent Trademark Office, the Japanese Patent Office, the Korean Intellectual Property Office, the European Patent Office and the Spanish Patent and Trademark Office), and is part of multilateral PPH agreements in Latin America, such as PROSUR-PROSUL (including Argentina, Brazil, Costa Rica, Chile, Ecuador, Paraguay, Peru and Uruguay – Panama, the Dominican Republic and Nicaragua have recently joined this Agreement but the particular PPH Guidelines have not been issued yet), the Pacific Alliance (including Chile, Peru and Mexico) and the Global PPH (including other 26 patent offices).

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

Decision 486 requires the specification to include sufficient disclosure of the invention to allow a skilled artisan to reproduce the invention and make clear the inventor was in possession of the invention at the time the application was filed. Additionally, the specification must contain the best mode to produce the invention.

As a general rule, specifications that comply with European Patent Office standards will normally not have a disclosure issue before the CPO.

Must an inventor disclose prior art to the patent office examiner?

Applicants have the obligation to include in the Specification of patent applications the prior technology known to the applicant that would help the invention to be understood and examined and references to previous documents and publications that discuss the technology involved (article 28(b) of Decision 486). The foregoing has not been interpreted by the CPO as a specific duty to disclose prior art that may be materially relevant to the patentability of the invention. Additionally, according to article 46 of Andean Decision 486, the CPO may request search results and examination reports of counterpart applications in other patent offices.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

No, if the earlier application is not claimed as priority, a later filed application cannot claim aspects or features of an invention previously disclosed in an earlier filed application.

At best, the only way to pursue additional claims are through divisionals (article 36 of Decision 486), which legally have the same filing date as the parent application. Such divisionals should be directed to material split out from the parent application and must be filed before a final decision is issued. In September 2020 (through Resolution No. 59669), the CPO modified the requirements for filing divisional applications, and now the only request is that the claimed subject-matter is different from the one recited in the parent case. Finally, splitting out divisionals from divisionals is not allowed.

Amendments to the Specification or claims in the parent case are possible at any time during prosecution before the issuance of a final resolution, as long as said amendments do not extend the original scope of the invention and find support in the specification (article 34 of Decision 486). Post-grant amendments to the Specification are not possible. However, the applicant may limit the scope of one or more granted claims or divide them (articles 70 and 72 of Decision 486).

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes.  Before seeking judicial review, the applicant may file a reconsideration action in pursuing to revoke, clarify or modify the rejection of one or more claims (the reconsideration action is optional and is not required to exhaust administrative remedies). This action must be filed before the CPO against the adverse decision within 10 business days. If the CPO confirms its decision, the Applicant may additionally seek judicial review by filing an annulment action against the Council of State within four months following the notification of the final resolution from the CPO.

Does the patent office provide any mechanism for opposing the grant of a patent?

Yes. Andean Decision 486 provides a pre-grant opposition system.  Interested third parties may file an opposition within 60 days following the publication of the application, which can be extended for an additional 60-day term upon request. The CPO will consider the relevance of the opposition in the framework of the examination (that is, there is no separate opposition procedure to delay prosecution of the application). In addition, third parties may also file observations providing arguments and evidence to the CPO at any time (for example, even after the time to file an opposition has expired). However, unlike an opposition, the CPO is not compelled to take this information into consideration.

Additionally, opponents (which have filed oppositions in time), may file reconsideration actions against a resolution granting a patent. Filing a reconsideration action automatically suspends the effect of the granted patent until it is resolved. In theory, the patent owner should be notified of an opponent’s reconsideration action and will be allowed to file arguments in response. Nevertheless, in practice, the CPO states that there is no legal obligation to inform the patent owner and provide a term to submit arguments unless the opponent includes new evidence (eg, new prior art documents) within the reconsideration action.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Article 22 of Decision 486 establishes that whoever has an earlier priority date wins in a priority dispute.

The affected party may seek the annulment of patent (article 77 of Decision 486), or the transfer of the pending application or the patent (article 237 of Decision 486).

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Post-grant limitations to the claims may be made before the CPO (article 70 of Decision 486). Additionally, division of granted claims is possible (article 72). There is no re-examination procedure available.

A patent granting can be challenged at any time via judicial review through an Annulment Action filed before the Council of State. It is not possible for a court to amend the patent claims during an infringement lawsuit.

Additionally, the direct revocation of a patent by the CPO is theoretically possible, whenever it is contrary to the law, contrary to the public interest or causes unjustified harm. However, for the CPO to revoke a granted right, the patent owner must also authorise such a revocation. This makes the direct revocation impractical when seeking invalidation, making the annulment action the proper route.

How is the duration of patent protection determined?

Patents are granted for a 20-year period from the date on which the application was filed (for conventional applications: article 50 of Decision 486) or from the international filing date (for Patent Cooperation Treaty: National Phase applications: article 11.3 PCT).

There is term restoration available for patent holders for unreasonable delays (excluding pharmaceutical products) wherein prosecution has lasted more than five years from the filing date or three years counted from the date of examination request, according to the established compensation standards listed via Decree No. 1873 of 2014. To the best of our knowledge, this restoration has not been requested or applied in Colombia, most probably given the short prosecution average times.

Law stated date

Give the date on which the information above is accurate.

19 March 2021.