Article 34 of Decision 486 of the Andean Community states that a patent application may be modified at any time during the process, as long as it does not imply an extension of the disclosure contained in the initial application.
In this regard, the Court of Justice of the Andean Community, on more than one occasion, has interpreted the scope of Article 34 of Decision 486, in particular, the opportunity to submit a divisional application. The Andean Court has issued, at least, the following preliminary interpretations: N° 102-IP-2014, N° 532-IP-2016 and N° 149-IP-2019.
In preliminary interpretation N° 102-IP-2014, the Andean Court determined the following:
The patent granting process consists of all those administrative stages that must be completed in the respective office, which begins with the application and ends with the firm administrative act that grants or denies it. It is important to note that an administrative act becomes final when the term to present appeals expires and they are not filed, or when the appeals provided for in national legislation have been presented and are resolved by means of an administrative act.
On the other hand, in preliminary interpretation N° 532-IP-2016, the Andean Court stated:
(…) if the divisional application is submitted in time to file appeals, that is, when the process had not been completed, the application was filed in a timely manner.
Finally, in preliminary interpretation N° 149-IP-2019, the Andean Court determined:
The community standard states that the divisional application can be filed at any time during the patent process before the Resolution becomes final. This means that as long as the administrative act that grants or denies the application is not final, the petitioner can present his divisional application so that the competent office provides the corresponding procedure and can process it. If it is presented in the term to file appeals; that is, when the administrative process had not been exhausted, the application was submitted in a timely manner. It is important to differentiate the divisional request from the respective appeal. In the event that the divisional application has been submitted when the administrative act has become final, said application will be processed independently.
In this regard, the Andean Court has been clear in pointing out that an administrative act is final when the corresponding appeals are not filed, or when, after filing, an administrative act is subsequently issued that puts an end to the administrative procedure. In this sense, the opportunity to present a divisional application is when the administrative proceeding is not yet exhausted.
However, it could be argued that the presentation of a divisional application, within the term to present the appeals, the initial application should remain active; In other words, the granting of a divisional application would be conditioned to the presentation of the appeal in the parent application.
The case of AB Enzymes OY from Finland
On December 21, 2006, AB Enzymes OY from Finland applied for a patent in Peru, claiming priorities dated December 22, 2015, which was denied in the first administrative instance. Said resolution was notified on September 29, 2010, which term to file an appeal expired on October 21, 2010.
On October 19, 2010, AB Enzymes OY filed a divisional application requesting the parent´s application presentation date to be considered as filing date (December 21, 2006). However, the Patent Office did not admit the divisional application for processing because the parent application was not active, that is, the resolution that denied said application was not appealed.
AB Enzymes OY appealed, stating that the divisional application was submitted before the expiration date to file the corresponding appeal, complying with the provisions of the andean community legislation. Likewise, the applicant pointed out that the Patent Office was requesting an effective appeal for the parent application in order to admit for processing a divisional application when this was unreasonable because the second administrative instance did not admit the presentation of a new set of claims. Although, in principle, the Intellectual Property Chamber indicated that the presentation of a divisional application should not be conditioned to the fact that an appeal has been filed in the parent application, later, declaring its own pronouncement null and void, it indicated the contrary.
AB Enzymes filed a contentious administrative action before the Judiciary. The Superior Court of Justice of Lima, requested a preliminary interpretation from the Andean Court, which was issued in Process N° 102-IP-2014. Subsequently, the Court of Justice declared the claim founded; and, consequently, the resolution of the Intellectual Property Chamber null and void. The Court of Justice stated the following:
- The applicant may submit its divisional application after the issuance of the administrative act of first instance, but before the deadline for the administrative act to become final.
- The divisional request is an independent request that generates an autonomous incident, it does not depend on the applicant to file an appeal.
- Article 36 of Decision 486 does not condition the admission for processing of a divisional patent application to the fact that the first instance resolution from the parent application is challenged, since both processes are independent.
Finally, by Resolution N° 0517-2019/TPI-INDECOPI, The Intellectual Property Chamber revoked the pronouncement of the Patent Office and admitted the divisional application for processing.