Date: February 15 - 2019

Recent Prejudicial Interpretation 453-IP-2017, issued on November 8, 2018 by the Andean Community Justice Tribunal (ACJT), established the rules concerning due process with respect to patentability opinions from external experts that Andean Community¹ country’s patent offices may request during the patentability examination, as allowed by article 46 of Andean Decision 486.

Patent Examination procedure in the Andean Community is basically ruled by 3 articles in Decision 486; Articles 45, 46 and 47. Article 45 covers the main examination procedure, which indicates that the patent office shall notify at least one examination, and may notify more if necessary, if the patent application does not meet one or more of the patentability requirements, upon which the applicant has 60 days to respond, with a one-time-only 30 day extension available. Article 46, which is the basis of this article and which we will cover in more depth below, among other aspects, provides the patent office with the possibility of requesting: i) an opinion on the patentability of the invention from experts, suitable institutions or other countries’ patent offices, and ii) documentation from the applicant as to decisions over the patentability of the invention in other countries, for which the applicant has 3 months to comply. Finally, Article 47 simply indicates that the applicant may request the suspension of the patent application process when the examiner has requested certain specific documentation from the applicant (see (ii) above) under Article 46 which is delayed past the 3 month deadline established by Article 46. 

Article 46 of Decision 486, as it pertains to such opinions on patentability that the patent office may request as part of the examination procedure, reads as follows: 

“Article 46. The competent national office may solicit reports from experts or from scientific technological bodies considered suitable, so as to have their opinion on the patentability of the invention. It may likewise, if it sees fit, solicit reports from other industrial property offices. (...)”

The issue at hand with respect to article 46 of Decision 486, which brought about part of the Prejudicial Interpretation which we are discussing, is that it does not establish a specific procedure for the patent office to notify the applicant with respect to the opinion on patentability from experts, competent institutions or other countries’ patent offices. The case at hand involved the Colombian Patent Office (CPO), which allegedly did not provide the applicant the opportunity to argue with respect to the patentability opinions obtained from experts by the CPO during the examination procedure, per Article 46 of Decision 486. 

The ACJT, through Prejudicial Interpretation 453-IP-2017, has indicated that because of the relevance of such patentability opinions on the substantive analysis of a patent application, the right of the applicant to contradict such opinions on patentability must prevail, preserving the right to due process. The ACJT goes further and establishes the following rules and comments with respect to the notification to the applicant of such patentability opinions: 

1. Every time an opinion on the patentability of the invention from experts, competent institutions or other countries’ patent offices is obtained by the patent office under Article 46 of Decision 486, the same must be notified to the applicant, because these experts, competent institutions or other countries’ patent offices are external to the examining patent office.
2. Notwithstanding point 1, if the patent office obtains a second opinion on patentability to settle points controverted with respect to a first opinion on patentability, such second opinion must be notified to the applicant only if the second opinion contains new or different elements, points or topics with respect to the first opinion, despite the fact that the conclusion of the first opinion is reiterated or not by the second opinion.
3. If an opinion on the patentability of the invention from experts, competent institutions or other countries’ patent offices is obtained by the patent office during a second instance, previous rules 1 and 2 apply.
4. An expert, as indicated in Article 46 is considered as such if it is an external expert, that is, an expert that does not have a labor contract with the patent office, such as a services rendered contract or any other contract that does not imply a dependency relationship.
5. Finally, notification of a second or subsequent opinions on the patentability of the invention from certain experts, competent institutions or other countries’ patent offices is not necessary, if the patent office observes that the applicants claim modifications which promoted the request of new opinions on patentability by the patent office, were performed primarily with dilatory purposes. 

Summarizing the above, we note that an external opinion on patentability per Article 46 of Decision 486 must be notified to the applicant by the corresponding Andean Community Country’s patent office if: 

• It is the first external opinion requested; or
• It contains technical aspects not contemplated by a previous external opinion, unless the patent office observes that the applicant is modifying the claims to promote subsequent external opinions in an attempt to delay or extend the examination process.

¹ Andean Community Countries are Colombia, Ecuador, Peru and Bolivia