By Marta Garcia
On November 2017, the Chilean PTO (INAPI) published an update of the patent examination guidelines providing clarifications regarding divisional applications.
The Regulations to the Chilean IP Law establish that an applicant may voluntarily divide his/her application into two or more divisional applications until the issuance of the first office action regarding substantive examination, provided that the divisional application(s) does not go beyond the scope of the parent application as originally filed.
After that time, divisional applications may only be filed at the Examiner’s request, when an observation due to lack of unity of invention is raised, and only while the parent application is still being prosecuted.
The updated text of the patent examination guidelines recently published by INAPI clarifies some issues related to divisional patent applications, mainly regarding the deadline to file, term and the due date for the payment of maintenance fees.
The following is a summary of the changes introduced by the guidelines:
1) The updated text clarifies that the filing of successive divisional applications has the limitation that a final resolution has not yet been issued for the parent application.
2) The guidelines also specify that, since the examination of a divisional application is performed separately from the parent application and retains its same priority date, the same rules for the parent application apply in order to determine the term and the due dates for the payment of maintenance fees.
3) It is specified that the due date for the payment of maintenance fees for divisional applications is calculated based on the filing of the parent application.
4) The new guidelines expressly state that in those cases where the parent patent obtains a patent term extension according to Art. 53 BIS of the IP Law, this extension will not be applicable to the divisional application(s) based on said parent application, since the unjustified administrative delay in the granting of a patent or its marketing authorization is specific for a patent.
It is worth mentioning that the current Chilean IP Law does not establish any term of duration for divisional applications. Article 39 of the IP Law states that patents “shall be granted for a non-renewable period of 20 years counted from the filing date of the application,” without referring to the parent application.
The above has caused that, in some cases, the INAPI has calculated the term of duration of divisional applications based on the filing date of the divisional application, which caused the divisional application to have a validity date later than the corresponding parent application, which is not correct.
An amendment to the IP Law currently under preparation establishes that the term of protection of divisional patents should not exceed the term of the corresponding parent application.
In Chile, any patent application that has been granted can be eligible for a term extension, when: i) the term of the prosecution of the patent application exceeded five years from the filing date to the granting date or of three years from the requirement for examination, whichever occurs after; ii) the term for the granting of the marketing authorization exceeded one year since the request was filed; and iii) the term extension is requested within six months after the granting of a patent (or after the granting of the authorization), as long as there has been an unjustified administrative delay in the granting of the patent or the granting of the marketing authorization.