Judicial decision grants a new opportunity to patent applicant

By Francisco Espinosa

A recent judicial decision could reverse an unfavorable criterion by the Peruvian Patent Office against providing enough time to applicants to answer technical reports for examinations in depth of patent applications.

A judicial decision issued on file No. 06530-2010-0-1801-JR-CA-17 on September 30, 2011 by the Sixteenth Specialized Court for Administrative Contentious matters, of Lima, has declared null a second instance administrative resolution issued by the Intellectual Property Chamber of the Board of Appeals for the Peruvian Patent Direction which rejected a patent application, and has ordered such Chamber to grant to the plaintiff Bayer Schering Pharma AG a new legal term to respond a technical report issued in such matter.

In the administrative stage, the IP Chamber had proceeded to give official notice of that new technical report at the same time of notifying the Resolution which rejected the patent application, so no opportunity was granted to the applicant to answer such report.

Moreover, according to the legal interpretation made by the IP Chamber, it is not possible to introduce any changes to the patent application or to its claims after the first decision of the Peruvian Patent Direction is issued in first administrative instance.

However, the judicial decision has also declared that the applicant may be able to introduce any changes to the application or the claims at the administrative appeal prosecution stage, on second instance, as long as those modifications do not represent a broadening of the protection requested on the initial application. The claims may be edited or reduced according to law, but should not broaden its scope with regards to the initial information disclosure.

IN sum, the Court has considered that the Patent authorities should notify at least once the first technical report that is issued in each administrative instance, first or on appeal, of a patent application procedure, and in both cases should grant the applicant the time and legal opportunity to modify the application and claims with the limitations contained in the law.

This is a very positive precedent which, if generally accepted, would provide more flexibility to patent applicants in order to answer technical reports issued on appeal, and introduce modifications to the application or claims at such moment, resulting in more chances to obtain a patent and overcome official objections.

However, until now the Patent administrative authorities are accepting these judicial decisions on the specific cases where they are issued, but are still reluctant to apply that criterion on all the cases. Hopefully if these kinds of decisions become more common, such criterion may be finally changed.