Amendments to Patent Law

1.      Products obtained by a patent protected process

The amendment which now includes the protection of products obtained by a patent protected process is certainly correct. It literally transcribes Article 28.1(b) of the TRIPS Agreement. However this amendment does not stand for a real change in the legislation, because the doctrine of the Argentine Supreme Court obliges the Courts to directly apply Article 28.1(b) of the TRIPS Agreement, which is very clear in this respect.

2.      Preliminary injunctions

It is our understanding that this wording would probably not improve the position of potential applicants for preliminary injunctions in patent matters.

The situation prior to the enactment of the new law was that the Courts were applying directly the provisions of Article 50 of the TRIPS Agreement. There were no additional requirements, nor any special procedure to obtain the injunctions, although sometimes the local rules of civil procedure were applied without causing further complications.

The new law passed by the Argentine Congress includes requirements that are neither provided for by the TRIPS Agreement, nor currently being required by the Courts, namely:

(a) That there must be a "reasonable likelihood that the patent, if challenged by the defendant as being invalid, shall be declared valid”.

Until now the Courts correctly considered a patent in principle as valid and enforceable, and only considered validity issues in injunction proceedings when there was an extremely clear showing of invalidity by defendant.

(b) That before granting the measure an expert must be appointed ex officio by the Courts.

This was not previously required, and not only constitutes a further and sometimes unnecessary complication, but also creates a risk that the injunction is not granted if the expert is not sufficiently qualified (experts are selected randomly from a list existing at the Court of Appeals).

(c) That the measures will be granted inaudita altera parte only "in exceptional cases such as when there is a demonstrable risk that the evidence may be destroyed".

Prior to the enactment of the new law, preliminary injunctions were granted by the Courts always inaudita altera parte, and not only in exceptional cases, because that was the basic principle in Argentina in preliminary measures.

(d) TFhe Court should now determine whether "the damage that may be caused to the title holder exceeds the damage that the alleged infringer will suffer in case the measure was erroneously granted”.

The consequence of this new requirement, not included in the TRIPS Agreement, may mean that in the future the granting of preliminary injunctions in patent matters may be more complicated. Defendants almost always complain about damage to local industry, imposition of a monopoly, and the like. In our opinion Article 50 of the TRIPS Agreement provides exactly the contrary: in case of doubt, the patent holder must be favored, and the injunction granted.

The obligation of discussing validity and likelihood of infringement with an expert and with defendant as a practical matter could transform a summary proceeding into a full lawsuit, thus contradicting Article 50 of the Trips Agreement that requires that the measures to be taken must be "prompt and effective".

3.      Shifting of the burden of proof in process patent infringement cases

The new law arguably improves the situation of patentees regarding the "Shifting of the Burden of Proof in Process Patent Infringement Cases". Arguably, because the reversal of the burden of proof was already available to patentees on the basis of a general principle of procedural law, which had been expressly applied to a patent case in an injunction proceeding in re: “Eli Lilly“ (Court of Appeals, Tribunal III, October 11, 2001).

In summary, the new law apparently does not improve the situation of patentees in connection with preliminary injunctions. To the contrary, the granting of a preliminary injunction may be more complicated as well as more time consuming. In addition, the new law probably does not contain major benefits in relation with the protection of products obtained by a patent protected process and with the reversal of the burden of proof for process patents.