Newsletters

Significant modifications to the PI laws in Argentina
Part II - Patents

• 2018, March
• Alfredo M. Sena - amsena@sbm.com.ar / Gustavo A. A. Sena - gsena@sbm.com.ar / Doumary Ordoñez - doumary@sbm.com.ar

Preliminaries

In our last Newsletter we wrote about the changes originated on January 12 this year through a so called Emergency Executive Order (DNU 27/2018). For information on the characteristics and purposes of such Decree, the opposition it encountered and the Argentine government decision to split the text decree and turn it it three bills that were submitted to the House of Representatives on March 1 to be treated by the Congress, please read the following link http://www.sbm.com.ar/en/dnu_marcas.php

 

Recently, the Bills were approved by the House of Representatives with minimum modifications and were forwarded to Senate for their treatment.  Meanwhile, the Executive Power if drafting the regulation of those norms and proceedings that are not directly applicable.

Below we will discuss the main provisions of the former DNU, now converted into Bills, related to Patents and Utility Models.  However, as we said in our previous Newsletter, we will have to wait for the fate of the bills in order to know which the definite provisions will be.

 

Patents

As with trademarks, proceedings are turning into electronic files.  However, this is being done in a confusing manner.  Former section 12 provided for that in order to obtain a patent, a written application was to be filed with the National Board of Industrial Property (INPI)  The modification has deleted the word “written”.  Even though an online or electronic filing is written, the deletion was unnecessary.  An  application “by itself” could be a recording in an appropriate means, or with a simple petition attaching a prototype.  Is this the intention of the new provision?  Actually, it was enough with establishing that the application could be made in paper or online or electronically.  We hope the regulation will clarify this issue.

The priority right should only be invoked in the application. The filing of a Priority document is not required.  However, the Patent Administration -at the time of conducting the substantial examination- may require the filing of such priority document along with its translation.

Several terms have been shortened.

• The term for filing the documents missing at the time of application was reduced from 90 to 30 running days.
• The term for converting a patent application into a utility model and vice versa was reduced from 90 to 30 running days.
• The term for answering a preliminary office action was reduced from 180 to 30 running days.
• The term for the applicant to pay the Substantial Examination fees was reduced from 3 years to 18 months as from the filing of the application.

 

Utility Models

Their admissibility requirements are modified.  An absolute novelty is required (before the modification it was only required novelty in the country) and industrial capacity.

It is established that the substantial examination fee should be paid within 3 months as from the application, under penalty of having the application considered withdrawn.

Once the fee is paid, the application is published, at which time the 30 days' term for filing observations starts running.  Once this term expires, the Patent Administration shall resolve the proceeding.

 

Legal standing

The legal standing invoked both in the patent applications and in utility model application are considered an affidavit.

Therefore, it is no longer necessary to submit the Power of Attorney, and it will be enough to state the capacity as attorney-in-fact.  However, the Patent Administration may require the filing of the document proving such capacity at any time.

 

Functions of the National Board of Industrial Property (INPI)

Wide powers are granted to INPI to modify and delete fees for the proceedings conducted at said organism and to manage the funds collected.

 

Comments

Will INPI really work as an Autarchic Entity?
With the powers received as regards the fees and having the management of the funds generated, they have everything in place to do so.
This will allow the authorities to hire suitable and qualified professionals, as well as to retain the staff they have today.

We see that, in patent proceedings, the terms are reduced to the taxpayers, but INPI is also imposed to comply with the terms of its own as well as to resolve those proceedings that have been pending with excessive delay.

If what is sought is that INPI should match the standards of the best worldwide, not only the procedural but also the substantive legislation should be adapted.  It is imperative to analyze the adherence to the PCT.

Furthermore, it is essential to modify the treatment of patentable issues that have been excluded from protection due to provisions issued by the Executive Power but not the Patents Act.  Second medical uses are an example of these issues.

 

SENA & BERTON MORENO was founded in 1937 by ALFREDO SENA and ERNESTO E. BERTON MORENO as a Patent and Trademarks Agency with a stable staff of only four people. Since then, the Firm has grown to reach its current size of forty people, working at our offices located only two blocks away from the Government House and at the heart of the commercial and financial district of the city. Ver más