New patent regulations

1. Payment of annuities

Resolution No 225/2003 (“Annuities Resolution”), which was published on November 13, 2003, changes the due dates by which annuities shall be paid.

The Annuities Resolution establishes that the payment of annuities for all patents and utility models will be due by the anniversary of their filing dates.

The former provisions established different due dates for patents filed and granted under the rules of the previous Patent Law (D93/1996) and for patents and utility models granted under the rules of the present Patent Law (D158/1998). The Annuities Resolution will abrogate the former provisions when it enters into force on April 12, 2004, and all patents and utility models annuities will be due by the anniversary of their filing dates.

The Annuities Resolution does not provide for transitional provisions. It is our understanding that it would be advisable to proceed with the payment of annuities at the earliest due date resulting from the previous and new rules, until the new resolution will be completely in force, so as to avoid any future problems regarding possible discussions with the INPI or third parties about not or belatedly paid annuities, possibly causing the lapse of a patent or utility model. Bearing this in mind, it may occur that two annuities must be paid for one patent or utility model within less than one year.

The six-month grace period for the belated payment of annuities with a fine of 30% over the basic fee has been maintained. After the grace period the patent or utility model will lapse, unless it can be shown that the lack of payment was due to force majeure.

2. Priority List

On December 29, 2003, the INPI published Resolution No 264/03 (“Priority List Resolution”), which is intended to accelerate the prosecution of patent applications and is referred to as “Priority List”.

In Argentina patent applications are examined in each sub-class of the international classification (Strasbourg Agreement Concerning the International Patent Classification) according to the date on which substantive examination has been requested by payment of the corresponding fee. The Priority List Resolution allows applicants to exchange the order in which the substantive examination of their applications is performed, provided that:

(a) the applications are in the same sub-class of the international classification;
(b) the applications have been published by December 29, 2003;
(c) the substantive examination has been requested and the corresponding fee paid by December 29, 2003.

The exchange in the examination order can be requested by the applicants or their patent agents, who must attach a copy of the power of attorney granted by the applicant.

In order to perform the exchange of the examination order the applicant shall file within a term of sixty (60) calendar days, latest by February 27, 2004, a form provided by the INPI. The Priority List Resolution stated that this due date is not extendable. The form must specify the two patent applications whose order of examination will be exchanged.

Afterwards, the Patent Office will issue another resolution, which may not be appealed, indicating for the respective applicants the new order in which their cases are examined. The prompt actions requests will be suspended from December 30, 2003 to February 27, 2004.

It is not clear from the resolution if two or more exchange requests may be filed for one application. For example to bring applications 1, 2, 3 in an examination order 2, 3, 1, first an exchange of 1 and 2 to reach 2, 1, 3 would be needed and thereafter in a second step of 1 and 3 to reach 2, 3, 1. Such multiple exchanges may have two possible problems. First, INPI will not accept multiple exchanges for one application. As a consequence they might either reject the exchange requests of all involved patent applications or accept only one of the two requests. Second, if INPI accepts both exchange requests, it may happen that the two requests are (inadvertently) applied in a wrong order. In the above example this would lead to a first exchange step of 1 and 3 leading to a new order of 3, 2, 1 and thereafter a second exchange step of 1 and 2, leading to a final examination order of 3, 1, 2 which is completely different from the desired 2, 3, 1.

In view of the above comments we would suggest requesting only one order exchange for each application so as to attempt to avoid any undesired prejudice, which may occur if an application is included in two or more order exchange requests.

3. Waiver of the international substantive examination

Resolution No 263/2003, which was published on December 29, 2003, partially waives the substantive examination (“Waiver Resolution”).

This new resolution allows the applicants to waive part of the substantive examination, particularly the one related to international prior art search and the corresponding patentability requirements, namely, novelty, inventive activity and industrial application.

This regulation will be applicable to patent applications filed before January 8, 2004, whose substantive examination was not yet started, under these conditions:

(a) If the Argentine patent application claims priority from the Paris Convention, the applicant shows that the foreign patent application has been granted by a Patent Office that performs substantive examination under the same patentability requirements as applied in Argentina.
(b) If the Argentine patent application does not claim priority from the Paris Convention, the applicant has to prove that:

i. the same invention has been granted in a foreign country after the filing date of the Argentine patent application;
ii. the disclosure of the invention has been effected after the filing date of the Argentine patent application;
iii. the patent office of the country that granted the patent for the same invention performs substantive examination under the same patentability requirements as applied in Argentina;
iv. there should be no foreign precedents from the date of the foreign filing to the date of the Argentine filing;

(c) the scope of the claims of the Argentine patent application must be identical or less than the one of the foreign patent;
(d) the Patent Law of the country, where the patent has been granted, must provide for the same patentability requirements as the Argentine Patent Law, i.e. absolute novelty, inventive activity and industrial application.

Nevertheless the granting of a patent will still depend on the remaining requirements established in the Argentine Patent Law and Rules:

(a) the application must comply with all formal requirements of the Argentine Patent Law and Rules;
(b) there is no Argentine valid prior art document published before the effective filing or priority date of the Argentine patent application;
(c) the claimed subject matter is not excluded from patentability under the provisions of Articles 6 and 7 of the Argentine Patent Law and Rules;
(d) observations of third parties filed under the provisions of the Argentine Patent Law and Rules must be evaluated by the examiner.

The Argentine Patent Office is allowed to suspend the benefits of the present regulation based on national defense, interior security, health emergency, or any other ordre public reasons.

4. Changes in the abstract

Resolution No 265/2003, which was published on December 24, 2003 allows the Patent Office to change the abstract when, by the sole discretion of the examiner, the abstract does not describe the object of the invention. The examiner may replace the abstract by the main claim (claim 1), or by the main claim and further secondary claims.

If the examiner considers that neither the abstract as filed by the applicant nor the main claim with or without further secondary claims do not fully describe the object of the invention, he or she may issue an Office Action requiring the applicant to file a new abstract.

RESOLUTION NO 225/2003 - ANNUITY PAYMENTS

Section 1 – Regulation No. 93 of April 24, 1996, Resolution No. D-158 of August 11, 1998 and Regulation No. 395 of June 14, 2001, issued by the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY, as well as any other resolution issued by it concerning the payment of annuities of patents and of utility model certificates are abolished.

Section 2 – The Annual Maintenance Fee must be paid in advance throughout the life of the patent or of the utility model certificate; payments must be paid as from notification of the applicant that the relevant patent or utility model certificate has been granted.

Section 3 – The lack of payment of any overdue annuity will entail the lapsing of the patent or utility model certificate, which shall occur as a matter of law, as set forth in Section 63 of Law No. 24,481 (as amended 1996).

Section 4 – The regulation resolving the lapsing must be published in the Patent and Trademark Bulletin and in the Official Bulletin. Title holders of patents and utility model certificates, of which the lapsing has been declared, have a term of 10-working days counted as from the last of the aforesaid publications for appealing the administrative decision declaring the lapsing before the Commissioner of the National Patent Administration.

Section 5 – As from the regulation declaring its lapsing and until an eventual reverting thereof, no payment in concept of annuities shall be accepted. The decision reverting the lapsing will be published by the same means mentioned in Section 4.

Section 6 – Partial or duplicate payments of maintenance fees will not be computed for settlement purposes. If the amount paid exceeds the amount of the relevant patent’s or utility model’s annuities, the excess amount shall be charged to the percentage corresponding to the last annuities, starting with the last one that was overdue.

Section 7 – Once an annual maintenance fee has been paid, this payment may not be transferred.

Section 8 – For determining the due date for the maintenance fee in all patents and utility models certificates the filing date of the application will be considered as its anniversary date.

Section 9 – The due date for paying the maintenance fee of patents and utility models certificates expires on the anniversary of the filing date of the application or on the following working day if the aforesaid anniversary were to fall on a non-working day.

Section 10 – Upon expiration of the term for payment of the relevant annual fee, a term of ONE HUNDRED AND EIGHTY (180) calendar days is granted during which the same may be paid with a THIRTY per cent (30%) surcharge.

Section 11 – The annual maintenance fees of independent patents filed during the effectiveness of Law No. 111 and the divisionals thereof, shall be designated with numbers as from the granting of the application, starting with number ONE (1). The first annual fees fall due upon notification of grant of the patent; they must be paid by the first anniversary of the filing date of the application following the aforesaid notification.

Section 12 – The annual maintenance fees of independent patents filed during the effectiveness of Law No. 24,481, of patents that claim a pharmaceutical product after January 1, 1995 and of utility model certificates, shall be designated with a number as from the filing date of the application, starting with number ONE (1). Payment must be made, in all cases, as from annuity No. 3. Upon notification of the grant of a patent all annuities are due from No. 3 up to the annuity number in course at the granting date. The aforesaid annuities must be settled on the first anniversary of the filing date of the application following the aforesaid notification.

Section 13 – The anniversary of the filing date of patents of addition correspond to the one of the patent to which it is an addition. At the time of the grant of the patent of addition, annuities are due as from the granting date up to the effective notification thereof with the annuity number corresponding to the one of the patent to which it is an addition.

Section 14 – Divisional patents of the patents mentioned in Section 12 have as their effective filing date and, thus, as their anniversary of filing date, the one of the application of their parent patent. Therefore, they shall be subject to the same regime established in Section 12.

Section 15 – When the present resolution enters in force, the terms currently in force, which had been established in the provisions herein abolished, will be without effect, and at the same time the terms of this Resolution will start to run automatically for making the relevant payments.

Section 16 - This resolution shall become effective ONE HUNDRED AND FIFTY (150) calendar days after its publication in the OFFICIAL BULLETIN and will be applied to all patents and utility models certificates, whether pending or already granted and in force.

Section 17 – Be it registered, notified and published in the PATENT AND TRADEMARK OFFICIAL GAZETTE, in the INPI’s web page; be it delivered to the ARGENTINE BUREAU OF OFFICIAL RECORDS in order to be published in the OFFICIAL BULLETIN during ONE (1) day and a copy thereof be placed in the information board, and then filed

RESOLUTION NO 263/2003 - WAIVER OF INTERNATIONAL SUBSTANTIVE EXAMINATION

Section 1 – The Argentine Patents Office is hereby imparted to deem that the requirements of Section 4 of Law No. 24,481 (as amended 1996) (absolute novelty, inventive activity and industrial application) have been performed, as well as the international search with respect of the applications filed during the effectiveness of Law No. 24,481 (as amended 1996) when it shall have been evidenced that the priority claimed in the terms of Section 4.A.1 of the Paris Convention has been granted abroad by the office of origin or by other offices, provided the laws governing such offices contemplate the conduction of the substantive examination and are subject to the same patentability requirements set forth in our legislation and that the subject matter may be patented in the REPUBLIC OF ARGENTINA (Sections 6 and 7 of Law No. 24,481 (as amended 1996)).

Section 2 – The Argentine Patents Office is hereby instructed to deem that the requirements of Section 4 of Law No. 24,481 (as amended 1996) (absolute novelty, inventive activity and industrial application) have been performed, as well as the international search with respect of the applications filed during the effectiveness of Law No. 24,481 (as amended 1996), provided no priority shall have been claimed in the terms of Section 4.A.1 of the Paris Convention, and due evidence is given that the same invention was granted abroad after the filing date of the Argentine application. Furthermore, the publication of the relevant invention shall have been made after the filing of the national application, the office granting same shall have conducted the substantive examination and shall be subject to the same patentability requirements applicable in our legislation, and the patentability of the subject matter shall be permitted in the REPUBLIC OF ARGENTINA (Sections 6 and 7 of Law No. 24,481 (as amended 1996)).

Section 3 – The above mentioned applications shall be granted under the following final conditions (a) the scope of the claims of the application filed in the REPUBLIC OF ARGENTINA shall be identical to or narrower than that of the foreign patent referred to in Sections 1 and 2 of this Resolution; (b) all formal requisites of applicable national legislation shall be complied with; (c) national backgrounds as of the effective filing date of the application in the REPUBLIC OF ARGENTINA shall not exist; (d) no foreign backgrounds shall exist from the filing date of the equivalent patent referred to in Section (illegible) of these presents and the effective filing date of the application within the REPUBLIC OF ARGENTINA, whose existence would affect the patentability requisites established in Section 4 of Law No. 24,481 (as amended 1996); (e) the subject matter claimed in the national patent application shall not fall under Sections 6 and 7 of Law No. 24,481 (as amended 1996) and under Section 6 of the Regulation (Exhibit II of Executive Order No. 260/96); (f) any objections raised by third parties in the terms of Section 28 of Law No. 24,481 (as amended 1996) and of the Regulation (Exhibit II of Executive Order No. 260/96) shall be considered.

Section 4 – This Resolution shall be applied to those patent applications filed up to its date of publication in the Official Bulletin and whose substantive examination has not already commenced.

Section 5 – Should no evidence be contained in the data bases, in the cases contemplated in Sections 1 and 2, the Argentine Patents Office shall within ninety (90) calendar days as from the date of notice require (Section 27, Subsection III(a) of Exhibit II of the Executive Order No. 260/96) a copy of the foreign patent and a translation by a certified translator of the claims, as such were approved abroad, if applicable, the adjustment of the claims to Law No. 24,481 (as amended 1996) and to Exhibit II of Executive Order No. 260/96 and, moreover and if so necessary, the evidence of the foreign law applied in resolving the equivalent patent and copy of the substantive examination by the foreign office.

Section 6 – The Argentine Patents Office is released from the obligation to apply this Resolution if there should exist express technical-legal grounds therefor, alleging matters related with the national defense, internal security, sanitary emergency or other public policy matters.

Section 7 – Upon compliance with the procedural stages and upon expiration of the terms set forth by the Patents Law and the Regulation thereunder, the Argentine Patents Office shall issue its opinion within the terms specified in Section 30, Exhibit II of Executive Order No. 260/96.

Section 8 – This Resolution shall become effective on the day following that of its publication in the Official Bulletin.

Section 9 - Be it registered, notified and delivered to the Argentine Bureau of Official Records in order to be published in the OFFICIAL BULLETIN, and, upon performance thereof, be it published in the PATENT AND TRADEMARK OFFICIAL GAZETTE, a copy thereof be placed in the information board, in the INPI’s web page and filed.

RESOLUTION NO 264/2003 - PRIORITY LIST

Section 1 – The holder of several patent applications may request the alteration of the order to conduct the substantive examination of its applications belonging to ONE (1) same subclass, taking as basis the date of payment of the substantive examination fee.

Section 2 – It is an essential condition in order to be granted the aforesaid alteration that the applications in whose respect it is sought belong to the same subclass, in accordance with the Strasbourg Convention on International Patent Classification. This provision shall exclusively include applications that have been published and have paid the relevant substantive examination fee at the time of publication of this Resolution.

Section 3 – As from the day following that of the publication of this Resolution in the Official Bulletin, the holders of patent applications eligible in the terms of Section 1 shall be called to file their petitions within the term and in the form set forth below.

Section 4 –Within SIXTY (60) calendar days counted as from the publication set forth in Section 3, interested parties may file their written petition with the INPI. The petitions should be made in writing and in the Exhibit hereto attached.

Section 5 – Only the holders of patents or the attorneys thereof shall be authorized to request the aforesaid alteration of the substantive examination. The petition shall also include a photocopy of the power of attorney, expressly indicating that it is a true copy of the original counterpart and that is current, with the effects of an affidavit.

Section 6 – Evidence of the authority of the petitioner shall be given upon the filing of each such petition. Likewise, a legal domicile shall be established for all due purposes.

Section 7 – It shall be necessary to file ONE (1) form per petition, it being understood that said petition shall not include more than ONE (1) alteration request. The petitioner shall mention the number of the TWO (2) applications in whose respect it seeks to alter the order of the substantive examination. ONE (1) INPI administrative dossier containing all the petitions shall be opened per each call.

Section 8 – The requests to alter the order that do not comply with all the requisites mentioned in the above sections shall be denied in limine.

Section 9 – If the petitioner complies with all the requisites in due time and manner, the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY (INPI) shall issue a resolution, which resolution shall be deemed final, granting the request, ordering that the date of payment of the substantive examination be altered in the data base of the Argentine Patents Office, that said alteration be registered in the data base, and that a copy thereof be entered in the dossiers affected by the chronological alteration.

Section 10 – The final results of the aforesaid call shall be published in the Patent and Trademark Official Gazette and in the Official Bulletin.

Section 11 – The petition to obtain an expedite procedure shall be stayed in all the dossiers where the aforesaid alteration has been requested. The stay shall become effective as from the publication by the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY of the call mentioned in Section 3 and will remain in force until the publication of the results of the requested changes.

Section 12 - Be it registered, notified and published in the PATENT AND TRADEMARK OFFICIAL GAZETTE, in the INPI’s web page; be it delivered to the ARGENTINE BUREAU OF OFFICIAL RECORDS in order to be published in the OFFICIAL BULLETIN and a copy thereof be placed in the information board, and filed.

RESOLUTION Nº 265/2003 - CHANGES IN THE ABSTRACT

Section 1 – In order to comply with the publication term provided for in Section 26 of Law No. 24,481 (as amended 1996), Regulation No. D-141 of August 3, 1998 issued by the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY is hereby supplemented with the provisions contained in these presents, to the effect of instructing the Argentine Patents Office to modify or replace the abstracts under preliminary examination with the first claim or with the first one plus the relevant claims, when said abstracts filed by the applicants fail to clearly reflect the contents of the invention.

Section 2 – If none of the above mentioned should reflect the inventive subject matter, the Argentine Patents Office shall demand the applicants to file a new abstract, under the provisions specified in Section 24 of Law No. 24,481.

Section 3 - That the publication shall mention, in all cases, the technical field of the invention.

Section 4 - This Resolution shall become effective on the day following that of its publication in the Official Bulletin.

Section 5 - Be it registered, notified and published in the PATENT AND TRADEMARK OFFICIAL GAZETTE, in the INPI’s web page; be it delivered to the ARGENTINE BUREAU OF OFFICIAL RECORDS in order to be published in the OFFICIAL BULLETIN and a copy thereof be placed in the information board, and filed.