Emergency Decree No. 27/2018: Re-Shapes Patent and Trademark Practice

Regarding trademarks, the changes are intended to shorten prosecution and simplify the opposition procedure. Oppositions will have to be settled by the parties (applicant and opponent) within three months from notice, and if they fail to do so the Argentine PTO will issue a ruling in a procedure which is yet to be determined. The PTO’s ruling may be appealed before the Court of Appeals. Currently, applicant and opponent have a non-extendable one-year term to settle the issue, and failure to do so causes the lapsing of the application unless the applicant completes pre-trial mediation proceedings and, if unsuccessful, sues the opponent before the Federal Courts.

Under the new decree the PTO can also decide on the cancellation and lapsing of a registration. Likewise, the PTO’s decisions may be appealed before the Federal Court of Appeals.

As regards lapsing, a registration does not lapse if the mark is used in connection with the goods and services it protects or in connection with related goods or services, even if they belong to a different class. Currently, use of a mark does not require to be on related products or services in order to maintain a trademark registration. Moreover, a sworn statement of use will have to be submitted by the sixth year of the registration term.

In addition, the new decree establishes that service of notice of all matters should be done electronically at the e-address provided by the applicant. In the case of oppositions against third party trademark applications these will only be filed on-line once the new procedure is properly implemented.

Turning to patents, the changes envisaged mainly affect several terms for submitting various documents, which are reduced considerably. Among these, the main change is that for requesting substantive examination, which is shortened from 36 to 18 months from the application’s filing date. The priority document, along with its translation, will have to be submitted only if the Examiner asks for it in the course of substantive examination; currently the priority document must be filed within 90 days. Similarly, it will be necessary to submit the Power of Attorney only if the PTO requests it.

Finally, concerning designs the decree retrieves practically in toto a draft bill of 2015. It simplifies the registration procedure, allowing multiple applications as well as divisional applications. Photographs are also allowed. The decree also provides for the deferred publication of the registered model, up to a maximum term of six months from the registration date; the current law has no such provision. And, more importantly, renewal is also greatly facilitated by the decree, in that it provides that it is to be carried out within the last six months of the design’s lifetime (and not within 6 and 9 months prior to the expiration, as in the current law). The decree also grants a six-month grace term from the expiration date to reinstate the expired design (similarly not provided for in the current law).