Argentina: A Comprehensive Overview of the Patent Prosecution Landscape
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These are the most frequently asked questions regarding patent protection in Argentina but if you have any other do not hesitate to contact the authors from Moeller IP:
- Legal framework and latest developments for patent applications in Argentina
- Forms of protection in Argentina
- Scope of Patentable Inventions
- Patent Enforcement
Referenced in this article
- International treaties: Paris Convention, TRIPS
- National Constitution of Argentina
- Argentine Patent Law No. 24481, amended by Laws Nos. 24572, 25859, and 27444
- Regulations: Decree No. 260/96, as amended by Decree 403/19.
- Administrative Procedure Law: No. 19549 and Decree 1759/72 (T.O 2017)
- INPI Regulations
What inventions are eligible for patent protection in your jurisdiction and are there any eligibility issues (eg, for software or life sciences inventions) that applicants must navigate?
In Argentina, inventions can be protected through two main forms of intellectual property: invention patents and utility models. Invention patents grant a term of protection of 20 years from the date of application, requiring novelty, inventive step and industrial application. They cover both products and processes, empowering patent holders to prevent the unauthorized use, sale, manufacture or importation of the patented product or any direct derivative of the patented process.
Utility models, on the other hand, offer a term of protection of 10 years from the date of application and focus on demonstrating a “ better use” of the object to be protected, excluding the requirement of inventive step. Utility models protect inventions related only to any new arrangement or form obtained or introduced in tools, work instruments, utensils, devices or known objects that lend themselves to practical work insofar as they involve a better use in the function.
Given that some deadlines and processes vary between the two pathways to protect inventions in Argentina, this article will primarily center on the framework of invention patents in Argentina for simplicity.
In Argentina, the scope of patentable inventions is defined by Article 6 of the Patent Law. It outlines several categories considered as non-inventions, which cannot be patented. These include discoveries, scientific theories, mathematical methods, literary and artistic works, software programs, methods for intellectual, commercial, and economic activities, and forms for presenting information. Additionally, methods for surgical, therapeutic, or diagnostic treatments for humans and animals, as well as the juxtaposition of known inventions, mixtures of known products, and certain types of living matter and pre-existing natural substances, are also excluded from patent protection.
Furthermore, Article 7 of the Patent Law specifies that inventions contrary to public order, morality, environmental well-being, or the health and life of humans and animals are not patentable. This extends to biological and genetic material existing in nature, as well as biological processes involved in reproduction and genetic processes related to materials capable of self-duplication under normal, natural conditions.
In summary, the Patent Law in Argentina restricts patent protection for specific categories of inventions, ensuring that certain subject matter, like medical procedures, and genetic material, falls outside the scope of patentable innovations. This legal framework aims to strike a balance between encouraging innovation and safeguarding public interests.
Pharmaceutical field: Notably, the pharmaceutical sector faces specific challenges due to Joint Resolution 118/2012, 546/2012, and 107/2012, often referred to as ‘the guidelines for the examination of chemical and pharmaceutical patent applications. Among other issues these guidelines states in this field that in the pharmaceutical field, new formulations and compositions, as well as their methods of preparation, are, as a general rule, considered obvious in light of the prior art.
Consequently, obtaining the grant of a patent in any of these technical fields has so far become very difficult, but the chances increase if the application is adapted/restricted to these current regulations.
Software field: Computer programs are excluded from patentability under Art. 6 c) of the Patent Law in Argentina. Although the legislation fails to clarify that computer programs “as such” are excluded, in practice INPI considers methods implemented by computer programs as inventions, provided that they are capable of providing a technical effect that goes beyond the interaction between the computer program (software) and the physical support (hardware) on which it runs.
Examination trends – what do potential applicants needs to know?
Argentina, as well as other countries in the region such as Bolivia, Paraguay, Uruguay and Venezuela, is not a Patent Cooperation Treaty (PCT) member country; therefore, patent applications should be filed within one year starting from the filing date of the priority application, in order to claim priority rights on the basis of Paris Convention.
If the Paris Convention one-year term is lapsed and there has not been public disclosure of the invention, AR patent applications may be filed without claiming priority rights and their novelty and inventive step will be assessed considering only the filing date in Argentina.
If the Paris Convention one-year term is lapsed and the invention has been made public by the inventor at any communication media, Art 5. of Patent Law provides for a one-year grace term for filing the patent application. At the AR filing date, prior disclosures shall be declared, providing evidence. (*)
If the Paris Convention one-year term is lapsed and the PCT application (or any national application of the patent family) has already been published, one-year grace term does not apply because publications made by any Patent Office are not considered “inventors’ acts” and AR applications are generally rejected at Substantive Examination.
Documentation and key deadlines: To file a patent application in Argentina, there are specific requirements and deadlines to be aware of:
Power of Attorney: The applicant must provide a duly signed Power of Attorney. It should also have Notary or Government Official Attestation of the signing party, along with Consular Legalization or The Hague Apostille. This document must be submitted within 40 working days from the filing date, and it’s a strict deadline with no possibility of an extension.
Documentation: A complete patent application must be submitted together with the filing form, which must include a descriptive memory, an abstract and the claims.
Priority certificates: Only country and priority date are required for filing, there is a 3-month time limit to declare the priority number. Although not required at the filing stage, priority certificates and assignment of priority rights may be requested by the examiner during the examination process. The Assignment of Priority Rights must be signed before or on the filing date in Argentina if the applicant in Argentina is not an applicant of the priority application. The sworn Spanish translation of the priority document shall be submitted within the deadline of 3 months as from AR filing date.
Argentina joined the DAS system in 2019, which allows for the exchange of priority documents. This means that the National Institute of Industrial Property (INPI) can deposit or add the priority document in the DAS system upon request.
Certificate of microorganisms: In cases of biotechnological inventions, a certificate of deposit of microorganisms in a recognized institution according to the patent law of Argentina is required.
Sequence listing: Argentina adopts WIPO Standard ST.26 as of July 1, 2022
Publication: After conducting the preliminary examination, the INPI publishes patent applications within 18 months from the filing date. The applicant may request early publication.
Substantive examination: For patent applications the substantive examination must be paid within 18 months from the filing date of the application.
Annuities: No annuities are due throughout the application process. Accumulated annuities (as from the third one) are due on the first anniversary of the filing date after the grant in Argentina. The remaining annuities must be paid yearly on the anniversary of the filing date.
Submit the application in a foreign language: it’s permitted, but a certified translation and affidavit must be provided within ten (10) working days.”
Key factors to consider in avoiding objections from the patent office - claim set: To minimize potential hurdles with the patent office, it’s essential to take specific factors into account when crafting your patent claims:
Focus on Products or Processes: Ensure that your claims center around products or processes. In Argentina, only claims related to products or processes are accepted. Independent use claims are not allowed, but secondary claims related to use may be accepted in specific technological fields.
Product by process clauses: when a product is difficult to define because of its structure and provided that there is no doubt that the product defined by a process is new and inventive, it may be adequately defined by means of the process by which it is obtained.
Claim categories: Avoid submitting independent claims of different categories, as they will not be accepted.
Claim Preamble and Transition Phrases: Clearly define the field of application in the preamble of your claims and use transition phrases like ‘characterized by’ where appropriate.
Method of application claims: Note that the criteria for method of application claims may vary depending on the technical field. In certain areas, these claims may meet resistance, as they are often interpreted as use claims.
Taking these factors into account in combination with other relevant elements is vital when drafting patent applications in Argentina to have a greater chance of success.
Amendments to the application/patent: The application as a whole (description + claims) can be amended during the administrative examination process, i.e. until the PTO issues a final decision on whether to grant or deny the application. This means that the application cannot be amended during the appeal or reconsideration action stage (where only the administrative procedures and arguments supporting the patentability of the invention are analyzed). Only obvious mistakes can be amended at this stage.
As a general rule, a granted patent cannot be amended. However, there have been few exceptions to this rule in which it was possible to amend obvious mistakes in the title and the text of the patent.
Divisional applications on the applicant’s own initiative: Divisional applications can be filed on applicant’s own initiative at any time before a final resolution regarding the parent application has been issued.
If the parent application is rejected (i.e., the PTO issues a denying resolution), the applicant has the right to appeal this final rejection by filing a Request for Reconsideration (a Reconsideration Action). The filing of divisional applications is accepted by the Argentine PTO during the reconsideration action stage. However, this divisional application depends on a positive decision of the appeal: If the rejection of the parent application is confirmed, this divisional application will be rejected too.
The subject matter claimed in the divisional application must be duly supported by the original description and must be clearly distinguishable from the subject matter claimed in the parent application. In other words, the claims of a divisional application cannot overlap with the parent claims. If the claims of a divisional application overlap with the parent claims or with the claims of another divisional application, the patent office will raise a double patenting objection in the first office action issued in connection with the overlapping divisional application. In that case, the applicant will have the opportunity to limit the divisional claims in order to overcome the double patenting rejection.
Applicant can file multiple divisional applications of one parent application, and he can also file a divisional application of a divisional application. In all cases in which a divisional application is filed, the “parent” application on which it depends must be pending at the time of filing the divisional application. Otherwise, the divisional application will be rejected without further processing.
Mechanism for expediting patent application examination: Argentina offers a mechanism for expediting the examination of patent applications under Resolution No. 56/2016. If your application has equivalent patents granted abroad, invoking this resolution can accelerate the priority order for application review. If your application complies with Argentine legislation, it could potentially receive a grant within a few months.
Resolution No. 56/2016 expedites the process for patent applications with equivalent foreign patents. To benefit from this resolution, current claims should align with those of the granted foreign patent, no national antecedents must affect patentability, the substantive examination stage should not have started, Argentine claims should be equal or more limited in scope than the foreign ones, the subject matter should not be excluded from patentability, and the foreign PTO granting the patent should follow criteria similar to those of the Argentine PTO.
This mechanism is applicable for countries with patent examination standards meeting or exceeding those set by Argentine patent law.”
How can applicants appeal office decisions?
In the INPI AR, the legal means for reviewing an administrative act is through various types of appeals, allowing applicants to challenge these acts.
Reconsideration appeal: This is the administrative means of challenging acts issued by the National Patent Administration (NPA). It is optional. The deadline for filing the appeal is 10 working days from the notification of the act. It is resolved by the NPA and involves an implicit hierarchical appeal in subsidy. It is a fee-based appeal and does not exhaust administrative channels.
Hierarchical appeal: Resolved by the Presidency of the INPI. It is of an autonomous nature. The deadline for filing the appeal is 15 working days from the notification of the act. It is fee-based and exhausts the administrative procedure.
Claim of illegitimity: If an appeal is filed after the expiry of the deadline, it can be dealt with by the Administration for reasons of legality. The consequence is the closure of the administrative and judicial channels.
Appeal before a higher authority: It is filed before the authority which issued the administrative act, namely the NPA, or the presidency of INPI. The issue is then brought to the Ministry of Production for its resolution. The term to file this appeal is of fifteen 15 working days from the notification date of said act.
Reconsideration appeal established by art 72 patent law: Valid only against the Provision that refuses the registration of a patent or utility model. It is resolved directly by the Presidency of the INPI. It is a fee-based procedure. The time limit to file the appeal is 30 working days from the notification of the refusal.
Once all administrative appeals have been exhausted the only available option to seek the overturn of an administrative decision issued by INPI rejecting a patent application is filing a judicial action within 90 days from the date when the challenged decision was issued before the Federal Courts on Civil and Commercial Matters of the City of Buenos Aires against the denial resolution.
In Argentina there are neither special administrative entities nor specialized judicial tribunals in charge of handling the validity and/or enforcement of patent rights
There are two types of judicial proceedings to deal with patent infringement; one based on civil and commercial law (civil proceedings) and the other on criminal law (criminal proceedings).
Different preliminary and final injunctions based on TRIPs and local procedural regulations are available, but while final injunctions may be easily granted together with a final decision, ex partes preliminary measures aimed at stopping infringing activities have become more difficult to obtain after the amendment of the Patent Law in 2003 and the case law that followed.
How are oppositions and re-examinations handled in your jurisdiction?
In Argentina, there is no formal opposition process for patents. Instead, the procedure involves third-party observations. Third-party observations can be submitted within sixty working days from the publication of the patent application, citing deficiencies in legal requirements for patent approval. These observations, presented in writing with supporting evidence, are limited to questioning the legal prerequisites for patent approval and do not impede the continuation of the process. During substantive examination, the examiner must consider third-party observations related to novelty, inventive merit, industrial applicability, or the legality of the claimed subject matter. Late or unpaid submissions are termed “warning notices.” Both warning notices and third-party observations become part of the record, but the examiner does not address warning notices during technical examination. After patent grant, any attempt by a third party to invalidate the patent must occur through judicial means.
INPI cannot declare the nullity of a granted patent so there are no re-examination procedures available but only invalidation/nullity actions as discussed below.
How are invalidation and inter partes reviews handled?
Invalidation of granted patents can be filed as either a counter-claim by a defendant in a judicial infringement proceeding or as a direct claim in a judicial invalidation/nullity proceeding. Both types of proceedings are decided by judges on Federal Civil and Commercial Matters.
In order to have standing when filing an invalidation/nullity judicial action the plaintiff must prove having a legitimate interest and in order to achieve the nullity of a patent provide all necessary technical and legal argument to overcome the presumption of validity of the administrative act granting the patent
Are any patent-term extensions available?
No, article 35 of the Argentinian patent law establishes that the exclusive rights of a granted patent last 20 years counted from the filing date, which cannot be extended. Some inventors have argued in courts that this term should be extended in certain circumstances, for instance to compensate for unreasonable delays during the prosecution not attributable to the applicant, but so far judges have rejected such petitions.
What are pendency levels for the last 12 months?
Currently, November 2023, the time frame for the examiner at the INPI to initiate the substantive study varies according to the technological field, ranging from 3 to 5 years to receive the first official action. In areas such as pharmaceuticals, biotechnology and chemical compounds, there have been considerable delays for the final resolution of the patent application up to 10 years in some cases. However, it is relevant to note that INPI is taking significant steps to shorten these delays, including the recent hiring of 7 new examiners. Currently, INPI’s two technical departments have a total of 59 examiners.