/ Inapi: examination guidelines and patent registration procedure update.30 November, 2017
The Patents Subdirection published the text corresponding to divisional applications in the examination guidelines and patent registration procedure, in order to formalize and standardize these new practices in the future.
Esteban Figueroa, Patents Subdirector, quotes “This process extends from the 2016 year. After socializing the update to content with users, legal studies and Achipi, we have proceeded to sanction the new text of Chapter XII to the Guidelines for the Examination Patents”
As a sumary, it establishes the following:
1) Clarifies that in the event that a request could give rise to more than one divisional request, Inapi must verify that the original request is not definitively resolved. If this is the way, any divisional requests that may arise, whether first or second generation, can not benefit from the treatment of a divisional application and Inapi will have, among other measures, the correction of the database, eliminating the mention “divisional”. Consequently, the filing of successive divisional applications has the limitation that the original application does not have a definitive resolution issued by Inapi.
2) Clarifies and establishes that since the divisional application is separated from the original application for the purposes of examination, and retains the same priority of the last one, the same rules apply as for the original application to determine its validity, as well as for the tax payment.
3) For the purpose of determining the payment of the maintenance fees for divisional applications, the date of termination of the five-year or decades of the original application is established. In case that the processing of the divisional application takes more than a quinquennium or decade as appropriate, both periods must be paid together, once the divisional application is granted, which, incidentally, is the same procedure followed in respect of any request.
4) is mentioned express constancy that in case that the original patent obtained an extension in the period of validity under the rules on Supplementary Protection, arts. 53 Bis 1 and following of Law 19,039, this extension will not be applicable to divisional application(s) of the original application, since the allegation of any unjustified delays is related to the particularities of the processing and , in that context, with the requirement that was formulated and granted, if applicable, by the Industrial Property Tribunal.
Patent Examination Guidelines updated can be found on Inapi website, click here to access to the content.