Draft bill for the protection of Revalidation Patents

To create an incentive for investments and provide inventors with an additional form of protection for their inventions, we prepared a draft bill for the protection of revalidation patents based on the Resolution on Revalidation Patents adopted by the Fédération Internationale des Conseils en Propriété Industrielle (FICPI) on June 6, 2003.

The draft bill was then sent to the Colegio de Abogados de la Ciudad de Buenos Aires who, after consideration and approval by the Committee on Technology and Intellectual Property, filed it with the Argentine Senate.

As in old Patent Law No 111, the new bill allows the revalidation in Argentina of a patent granted abroad, provided that at the time of filing of the revalidation application the invention has not been worked industrially nor commercially in Argentina, and that the invention complies with the other requirements for patentability provided by the current patent legislation.

The bill provides that the term of the revalidation patent shall not exceed the term of the revalidated patent and that, in absence of force majeure, it shall lapse automatically if there is no local industrial working of the invention within two years from the date of grant or if such working is interrupted for a similar term.

We attach copies of the FICPI Resolution and of the bill on Revalidation Patents.

FÉDERATION INTERNATIONALE DES CONSEILS EN PROPRIÉTÉ INDUSTRIELLE
RESOLUTION B

Revalidation Patents

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession of more than 70 countries and especially of all European Community Member States, assembled at its Executive Committee meeting held in Berlin from June 2 to June 6, 2003, passed the following Resolution :

Considering that investments in developing countries may be dependent on the availability of adequate patent protection for the potential investors, and that in many cases such protection is not available for lack of absolute novelty of the invention resulting from the prior publication or the granting of patents to the inventor for the same invention in other countries;

Recognising that so-called revalidation patents provide an exception to overcome the absolute novelty impediment referred to above, and also constitute a vehicle for the transfer of technology to the developing countries;

Noting that the possibility of obtaining revalidation patents is contemplated in the 1889 Montevideo Treaty on Patents adhered to by Argentina, Bolivia, Paraguay, Peru and Uruguay; and that article 1(4) of the Paris Convention for the Protection of Industrial Property provides that “the term ‘patents’ shall include the various kinds of patents recognized by the laws of the countries of the Union, such as patents of importation,” and furthermore that such provision of the Paris Convention (1967) is ratified by article 2.1 of the Treaty on Trade-Related Aspects of Intellectual Property Rights (TRIPS);

Noting that revalidation patents, rather than contradicting the provisions and terms set forth in the Patent Cooperation Treaty (PCT), supplement them by affording the possibility for protection beyond the PCT rules;

Recognising that since TRIPS does not make it mandatory to afford protection for revalidation patents, those member countries that do so may freely regulate them in accordance with their own national interests by requiring local industrial exploitation within a reasonable term.

Recognising that the examination made by national patent offices to determine the patentability of an invention is facilitated in revalidation patent applications, as a result of prior examinations made in other jurisdictions; and

Stressing that, in strict compliance with article 4bis(1) of the Paris Convention, the autonomy of the local authorities to grant patents valid for the respective territory shall be preserved, therefore

FICPI Resolves:

to recommend to those national governments who may obtain benefits to their economies derived from the so-called revalidation patents to consider the introduction or maintenance of suitable legislation to regulate them in accordance with their own national interests, including the requirement of immediate publication of the revalidation application for the protection of third party interests.

adopted 6 June 2003

Draft bill on Revalidation Patents

Buenos Aires, ___________

TO THE HONORABLE NATIONAL CONGRESS,

I am pleased to address Your Honor in order to submit for your consideration the attached bill of law proposing to introduce certain changes to the amended text of the Argentine Patents and Utility Models Law No. 24,481, which was amended by Law No. 24,572 (as amended 1996).

The purpose of this Bill of Law is to introduce a new chapter containing the relevant rules designed to protect a specific kind of revalidation patents in the Argentine Patents and Utility Models Law No. 24,481, as amended by Law No. 24,572.

Former Patents Law No. 111 included provisions related to the protection of revalidation patents.

Likewise, Articles 1 and 2 of the 1889 Montevideo Treaty on Patents contemplate a certain revalidation or confirmation for revalidation patents granted in the member countries: Argentina, Bolivia, Paraguay, Peru and Uruguay, provided they have been applied for within one year of having been granted.

Following the criterion of national and international legal scholars, revalidation patents fall under the regulatory framework of current international treaties and the manner to obtain them does not differ from the mechanism to be followed in order to be granted a patent by the Instituto Nacional de la Propiedad Industrial (Argentine Patent Office).

Article 2 of the Agreement on Trade Related Aspects of Intellectual Property Rights (known as TRIPS) which was ratified by Law No. 24,425, sets forth that “Members shall comply with Articles 1 through 12, and Article 19 of the Paris Convention (1967)” and, moreover, Article 1.4 of the Paris Convention also recognizes the patents of importation (also called “revalidation patents”) as one of the acceptable ways of protecting industrial property.

As from the enactment in 1966 of Law No. 11,017, whereby Argentina became a party to the Paris Convention (text of Lisbon, in 1958, which does not differ on this point from the text of 1967), hundreds of revalidation patents have been granted in our country, evidencing their consistency with the provisions of the aforesaid Treaty. This criterion has been recently reiterated by the, Word Intellectual Property Organization (WIPO) which for being the agency in charge of its administration, is the supreme international authority as concerns the construction of its provisions.

The fact that revalidation patents are in agreement with the provisions of the TRIPS and of the Paris Convention (1967) has been largely recognized worldwide. This was also recently recognized by the Federation Internationale des Conseils en Propriete Industrielle (FICPI) in its resolution of June 6, 2003, in Berlin, Germany, during the World Congress sessions.

FICPI has expressly stated when issuing the aforesaid resolution “that since the TRIPS does not oblige to afford protection to revalidation patents, the member countries that resolve to afford such protection may freely rule the matter, in accordance with their own national interests, requiring the industrial exploitation within a reasonable term” and concluded with the following resolution: “to recommend to those national governments who may obtain benefits to their economies derived from the so-called revalidation patents to consider the introduction or maintenance of suitable legislation to regulate them in accordance with their own national interests, including the requirement of immediate publication of the revalidation application for the protection of third party interests.”

This is deemed in order to improve the current degree of protection as concerns patents in order to attract investors, whether national or foreign, in an effort to foster the development of local research, as well as national production and manufacture, with the ensuing possibility of increasing the exportation of value-added domestic products.

That one of the means to attain such objective is to afford protection to a special kind of revalidation patents that are closely linked to the concept of investment prevailing in our country. Among the specific characteristics of this special kind is their independence from the revalidated patent and the fact that their validity is subject to the absence of local industrial or commercial exploitation of the invention prior to the filing of the relevant application in our country. Furthermore, their validity in the course of time is conditioned to the necessary manufacture or production of the invention in the national territory within a reasonable term as from the date the patent was granted and to the immediate publication of the application thereof in order to protect the interests of third parties.

Without prejudice to the independence that must exist as concerns the rights granted by the revalidation patent and the original patent giving rise to it, it is necessary that the latter be current at the time the revalidation thereof is requested in our country.

Following the rules of national and international legislation related with the term of duration of the patents, it is deemed in order that the revalidation patent be granted for a 20-year term as from the application date in our country. Should this term exceed that of the revalidated patent, it would not be advisable to extend the term of the revalidation for much longer. Therefore, it is deemed reasonable that the term of revalidation patent shall not exceed that of the revalidated patent.

In view of the foregoing, the proposal to introduce a chapter embodying the rules applicable to revalidation patents in the text of the Argentine Patents and Utility Models Law No. 24,481, which was amended by Law No. 24,572 is hereto attached.

Respectfully submitted,

THE LOWER HOUSE AND THE UPPER HOUSE
OF THE REPUBLIC OF ARGENTINA
ASSEMBLED IN CONGRESS
PASS INTO
LAW

ARTICLE 1: The following text is added to the Argentine Patents and Utility Models Law No. 24,481, which was amended by Law No. 24,572 (as amended 1996), to wit:

Title IX on REVALIDATION PATENTS

ARTICLE 105: Patents granted abroad may be revalidated within national territory, provided the applicant is the inventor or its lawful successor, and in the conditions herein set forth.

ARTICLE 106: It is an essential condition in order to obtain a revalidation patent that the patent be current on the date of the application and that the invention protected by it shall not have been industrial nor commercially exploited within the national territory.

ARTICLE 107: Revalidation patents shall be granted for a 20-year term as from their application or for the remaining term for which the foreign patent was granted, if shorter.

ARTICLE 108: Revalidation patent applications shall be immediately published on the Internet.

ARTICLE 109: Revalidation patents expire as a matter of law upon two years of their issue if the invention has not been manufactured or produced within the national territory or if such exploitation should be interrupted for an equal term, except in the event of an act of God or force majeure.

ARTICLE 110: Unless otherwise provided for herein, all provisions applicable to invention patents contained in this Law shall also apply to revalidation patents.

ARTICLE 2: Be it notified to the EXECUTIVE BRANCH.