“COUNCIL OF STATE DECIDED NULLITY AND REINSTATEMENT OF RIGHT ACTION ARISING FROM DECLARATION BY SIC OF PATENT ABANDONMENT DUE TO NON-COMPLIANCE OF FORMAL REQUIREMENTS”

The Council of State decided the Nullity and Reinstatement of Right action filed by SUN CHEMICAL CORPORATION in light of the Superintendence of Industry and Commerce decision of declaring abandoned the invention patent application filed by such company. The above as a result of the company’s failure to meet formal requirements regulated under community provisions at the time of filing the patent application. The legal issue to be evaluated by the Council of State is deciding whether the Superintendence of Industry and Commerce – SIC – acted in alignment with the law by declaring abandoned such application.

Accordingly it is necessary to analyze the significance of fulfilling formal requirements at the time of filing an invention patent application, which seems vital for the granting or otherwise of the right sought, the above without losing sight of what is provided in case law regarding the preeminence of substance over form. In this regard, we are before an exception to such principle, given that processing of the application is grounded on fulfillment of Articles 26, 27, 38 and 39 of Decision 486 of 2000 of the Andean Community, which relate to formal requirements the applicant must meet in order to be granted the patent according to the provisions under said regulation. The National Office must stringently observe enforcement of the regulation insofar as by granting a patent right it is affording an exclusive use to the applicant and third parties who would claim to hold a better right might be affected.

Effectively, most of the cases of default of formal requirements by the applicant render impossible the granting of an invention patent, given that it is necessary for the SIC to collect accurate information within the term provided in order to examine the application, in which case, obviously it is not possible to claim prevalence of substantive over formal law. In this regard the Council of State decided to refuse the claims under the action.

Notwithstanding the above, the petitioner should bear in mind that the regulations allow the filing of an invention patent provided that same has not been published and is not included in the State of the Art and has not been used by the applicant.

The above further taking into account that the “State of the Art shall comprise all that which the public has had access to by written or oral description, commercialization or any other type of means or media before the filing date of the patent application or recognized priority, as applicable.” (Decision 486 of 2000. Art. 16).