Patent applications: new requirement

On November 11, 2004, the Instituto Nacional de la Propiedad Industrial ("INPI"), the Argentine Patent Office, published Resolution No 372/2004 in the Official Gazette. This resolution requires applicants to confirm their interest in the further prosecution of their applications.

Resolution No 372/2004 is applicable to all pending patent applications filed before January 1, 2004, that claimed priority under Article 4 A 1 of the Paris Convention and are listed in an Annex published with this resolution. The applicants of each listed application are required to inform whether the claimed priority was granted or not within an unextendable term of 90 days from the publication of this Resolution in order to maintain their applications in force. If the patent applicant does not inform whether the claimed priority was granted or not, the INPI will consider that patent application as withdrawn.

This resolution, as well as previous Resolutions No 263/2003 and No 264/2003, is directed to expedite the prosecution of pending patent applications in order to reduce the backlog of about 34,000 pending patent applications under prosecution. More specifically the Argentine Patent Office seeks to filter out all patent applications in which their applicants have lost interest. This procedure will allow the Argentine Patent Office to avoid the examination of applications that will be abandoned.

Applicants must provide the requested information not later than 9 February, 2005.

Resolution No 372/2004

SECTION 1 - Pursuant to what is established in Section 27, second paragraph of Law No 24,481 and Section 27 of Decree No 260/96, the applicants of pending patent applications at the time the present enters in force, whether the examination fee has been paid or not, filed at this Office before January 1, 2004, and for which priority has been claimed pursuant to Article 4 A 1 of the Paris Convention, Law No 17,011, shall be required to state, in their own name or through their attorneys within NINETY (90) calendar days, whether such priority was granted in the relevant country of origin, under warning that if no response is filed the respective application shall be considered abandoned.

SECTION 2 - Notice of the requirement set forth in Section 1 shall be given to patent applicants or their legal representatives by publication in the Trademark and Patent Bulletin of a list setting forth the numbers of applications subject thereto, which are listed and this list made a part hereof as Annex I. No response is required under this resolution for pending patent applications not expressly included in such list.

SECTION 3 - The response to be filed according to Section 1 shall be filed using the form that is enclosed as Annex II.

SECTION 4 - The term established by Section 1 shall start as from the day after the publication of this resolution and the Annexes hereto in the Trademark and Patent Bulletin, and any time extensions provided under INPI Resolution No 167, dated May 30, 2001, shall not be applicable hereto.

SECTION 5 - After the expiration of the term established for filing the response, the Patent Office shall issue a resolution by which any patent application included in the scope of the warning set forth in Section 1 shall be declared abandoned. This resolution will be published in the Official Gazette and in the Trademark and Patent Bulletin.

SECTION 6 - This resolution shall be registered, communicated, given to the Federal Board of the Official Registry for publication in the Official Gazette, and shall also be published in the Trademark and Patent Bulletin with its corresponding Annexes, and a copy will be placed on the INPI billboard and website and will then be filed.