In an internal memorandum of December 22, 2004 addressed to officials in the Industrial Property Division, the Superintendent of Industry and Trade (the senior authority in the PTO) stated that amendments, conversions, divisions and mergers of patent applications processed by the Division could only be effected at any time of the processing of the application "i.e., prior to the date of issue of the administrative act that decides on it."

Thus, the Superintendent eliminated the possibility of making amendments, conversions , divisions or mergers in patent applications during the processing of recourse of reconsideration for revocation against a decision denying all or part of the patent application..

This new interpretation of Andean Decision 486 is based on a finding of the Council of State in Case 7684 of October 22, 2004 in a petition for nullity and restoration of rights entered by Vortex Pharmaceuticals Inc. against Resolution 21049 of June 28 2001 in which the Superintendency denied patent application for New Amino-Acid Derivatives with Multidrug Resistance Activity.

As part of the process of nullity the petitioner argued not only that an application could be modified within the proceedings of a reconsideration for revocation of a previous Resolution by presenting a new Claims Chapter; but also that it was not necessary to accredit payment of fees for the amendment since it was being presented at the urging of the Superintendency as the result of an objection of lack of novelty and inventive step of the original Claims Chapter.

The decision of the Council of State clearly establishes that, for the purposes of patent applications, there are two types of amendment or addition which can be presented at two different moments in time:

a) Amendments or additions made at the urging of the New Creations Division of the Superintendency of Industry and Trade as a consequence of the examination of substance, in accordance with the terms of Article 45 of Andean Decision 486; these amendments or additions must be made within the time allowed for them and do NOT require the payment of fees; or

b) Amendments or additions added by the applicant at any other point of the process but prior to a final decision resolving the application, at his initiative or will and subject to the terms of Article 34 of Andean Decision 486: these amendments DO pay the official fees.

Finally, the Council of State says that it must be clearly established when the prosecution of a patent application starts and ends in the terms of Decision 486. The process starts with the filing of the application at the Superintendency and ends with the decision to grant or deny the patent. Since the entering of a request for reconsideration against a decision denying all or part of the application is not provided for in the Andean Community regime, this stage of the proceedings is governed by Colombian national legislation and is not part of the "process" we refer to.

In effect, according to the decision discussed here, "administrative procedures available to challenge a final decision correspond to national legislation and as is known, they refer to that decision, since their object necessarily concerns the disagreement of the person affected with the decision and no new questions, i.e. questions not posed in the administrative process, may be raised."