Patent applications: Priority List II

On December 11, 2006 the INPI published Resolution No 350/06 (“Priority List Resolution II”), which is intended to accelerate the prosecution of patent applications and is referred to as “Priority List”. This new resolution refers back to Resolution No 264/03 published on December 29, 2003, but only differs in Section 4 which was amended to provide a longer term.

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 11, 2006;

(c) the substantive examination has been requested and the corresponding fee paid by December 11, 2006.

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.

We were unofficially informed that changes between different applicants within the same economic group may be allowed. If a change like this is to be requested, we suggest filing additional information to show that both companies belong to the same economic group. The approval of the request will be analyzed on a case by case basis by the INPI.

In order to perform the exchange of the examination order the applicant shall file within a term of 120 calendar days, at the latest by April 10, 2007, 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 12, 2006 to April 10, 2007.

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 occur 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.

INPI Resolution No 350/2006

SECTION 1 - The holders of patent applications are invited in a second call to request the change of the chronological order of the substantive examination of their patent applications using the proceedings established in INPI Resolution No P-264 of December 16, 2003; said resolution is completely ratified and confirmed together with the modifications arising from the present resolution.

SECTION 2 - Section 4 of INPI Resolution No P-264 of December 16, 2003 is modified establishing a term of ONE HUNDRED AND TWENTY (120) days counted as from the day following the publication of the present resolution in the Official Bulletin; during this term interested applicants can file their requests at the NATIONAL INSTITUTE OF INDUSTRIAL PROPERY (INPI) using the form attached in the Annex of the present resolution.

SECTION 3 - 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 on the information board, and filed.

INPI Resolution No 264/2003

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 – To grant the aforesaid alteration, the applications must 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 outright.

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.