Miranda y Asociados

PATENTS IN ARGENTINA

PATENTS IN ARGENTINA

CONCEPTS:

The inventions of new products or processes, provided that they involve an inventive step and that they are capable of industrial application, are patentable.
Any human creation enabling the transformation of matter or energy for its exploitation by man is considered an invention in Argentina.
There are constitutional provisions for patents.

LEGISLATION:

Patent and Utility Model Law Nº 24.481 of March 30, 1995, amended by Law Nº 24.572 of October 18, 1995 and Decree Nº 260 of March 20, 1996.
Argentina is a party to the Paris Convention.
Argentina is not a member of the PCT.
GATT-TRIP’S

PATENTABILITY:

Novelty: Absolute novelty is required in Argentina. Accordingly, publication, offer for sale or public use in the country or abroad before the application date (or the priority date under the Paris Convention) affect the novelty. However, the exhibition of the invention at a national or international exhibition within the one (1) year prior to the application date (or the priority date) does not affects this requirement.
Inventive step (non-obviousness): There is inventive activity when the creative process or its results are not deduced from the state of the art in an evident way for a person normally skilled in the corresponding technical matter.
Industrial application: The term “industry” comprises transformation industries, manufactures, agriculture, forestry industry, industry pertaining to cattle breeding, fishing industry, mining, and services.
Inventions are not patentable if the working thereof within Argentina should be prevented to protect public order or morality, human, animal or plant life or health or to avoid serious damage to the environment and the entire genetic and biological matter which exists in nature.
The following are not patentable in Argentina: discoveries, scientific theories, mathematical methods, literary or artistic works, aesthetic creations, plans, rules and methods for carrying out intellectual activities, games, economic and commercial activities, computer programs, methods of diagnosis, surgical or therapeutic treatment applicable to humans or animals, living matter and substances pre-existing in nature.
Pharmaceutical products and compositions are patentable in Argentina.

PATENT TERM:

The patent validity goes from the date of granting to twentieth anniversary of the application date.

APPLICANTS:

All physical or legal entities, national or foreign, are entitled to obtain patents.
The invention made by an employee in the course of his employment, contract, or during his service or labor relation, belongs to the employer if the purpose of such relation involves partially or totally inventive activities.
When a patent application is filed claiming priority under the Paris Convention, the right to claim should have been assigned from the inventor(s) to the applicant(s) prior to the filing date in Argentina.
The applicant may mention in the application the name of the inventor or inventors and require the inclusion of the same in the publication of the application.

RIGHTS:

When the subject matter of a patent is a product, to prevent third parties from effecting manufacturing acts, use, offer for sale, sale or importation of the product which is the subject object of the patent without consent.
When the subject matter of a patent is a process, to prevent third parties from effecting the act of utilization of the same without consent.

DOCUMENTS REQUIRED FOR FILING THE APPLICATION:

Power of Attorney, notarized and legalized by Appostille or by the Argentine Consulate. It must be submitted within ninety (90) days from the filing date in Spanish.
If an international priority under the Paris Convention is claimed, the following are the requirements:
- Country and application number and date of the priority. This information must be stated when filing in Argentina.
- Priority documents. They must be filed within ninety (90) days from the filing date in Argentina, together with a sworn translation in Spanish.
- Assignment of Priority Rights. The right to claim priority should have been assigned from the inventor(s) to the applicant(s) prior to the filing date in Argentina.

CLAIMS:

The set of claims must define the object for which the protection is applied for, and must be clear and concise. Said claims can be one or more and they have to be based on the description without exceeding it.
The first claim is the only independent one and it must refer to the main object. The rest of the claims must be subordinated to the first.
The claims must contain:
- a preamble or exordium indicating from the start the same title with which the invention has been denominated, subsequently comprehending all the known features of the invention emerged from the nearest state of the art, and a
- a characteristic part where the element must be mentioned establishing the novelty of the invention.

PROCEDURE:

Preliminary examinations: The Patent Office effects two preliminary examinations for technical and administrative formalities and may order the publication or raise official actions. If the applicant does not respond to the official actions within a term of 180 days, such application is considered abandoned.
The application is published after eighteen (18) months from the filing date. Upon the applicant’s request, the application may be published earlier.
Substantive examination: It must be requested before three (3) years as from the filing. Otherwise the application will be considered abandoned. The examination should be done within 180 days as from the request.
The Patent Office may request the applicant to submit, within a term of ninety (90) running days as from the date of notification of such requirement, a copy of the main examination realized for the same invention by foreign Patent Offices, if they were available.
Any person may lodge objections regarding the lack of novelty, industrial application, inventive or illicitness and enter documentary evidence within a term of sixty (60) days as from the publication. The examiner includes among his observations in the official communication the ones submitted by third parties.
Within sixty (60) running days as from the date of the notification of the official communication, the applicant must:
- amend the application for it to comply with the legal and regulatory requirements, or
- express his opinion about the observations, refute them or formulate the clarifications he considers pertinent or convenient.
- If the applicant does not answer the communication in the mentioned term, the application is abandoned.
When the formulated observations are not satisfactorily amended by the applicant, the examiner, issues another office action to the applicant, and advise to the Patent Office to refuse the application.
When all the corresponding requirements are approved, the Patent Office proceeds to issue the letters patent.
The granting of the patent is done with no prejudice to a third party with a better right than that of the applicant, and with no guarantee from the State concerning the usefulness of its object.
The announcement of the granting of the patent is published in the Patent Gazette.
A reconsideration appeal may proceed:
- against a decision refusing the granting of a patent;
- against a decision giving rise to the foreseen observations.
Flow Chart

MAINTENANCE AND COMPULSORY LICENSING:

After the patent is granted, the applicant must pay annual fees to keep the patent in force.
Annuities are due only when the patent is granted.
First and second annuities are complimentary.
If an applicant for a patent does not work or exploit the invention within the 4 year period from the date of the application or within 3 years of the date of the issue of the patent, or if working of the patent has been interrupted for more than 1 year (except in the case of force majeure and when serious preparations have taken place to work the invention object of the patent) a third party may apply for a compulsory license. Force majeure will be considered, not only as those circumstances universally recognized as such, but also those difficulties of a technical legal nature, such as delays in obtaining marketing authorization from public agencies.
The distribution and commercialization of a product, in a way sufficient for the demand of the domestic market is considered exploitation (working) of a product. This means that the local manufacture of an invention is not necessary to comply with the working requirement. Importation will suffice.

ASSIGNMENTS:

The patents may be transferable and licensed totally or partially. The assignment of the patent shall become enforceable against third parties, only after it has been recorded before the Patent Office. The Law, also provides that the licensee will have the right to exercise the legal actions that correspond to the owner of the patent only in the event that the latter does not exercise them himself.
The following are the required documents:
- Assignment document. Both parties must sign. If a party is a foreign person, the signature must be notarized and certified by Appostille or Argentine Consul. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form.
- Original certificate of registration in Argentina.
- Power of Attorney signed by the party, unless included in the assignment document is also required.
Documents must be in Spanish or filed together with a sworn translation.

NULLITY:

Patents granted in violation of the Law are null, totally or in part.
Any person (individual or company) with a legitimate interest may bring a nullity action within the Federal Court.
The decision can be appealed to the Chamber of Appeals and, under certain considerations, to the Supreme Court.

ENFORCEMENTS OF RIGHTS:

The infringement of the inventor’s rights is considered as counterfeit and punishable by imprisonment and fine.
This penalty is also applicable to:
- anyone who knowingly produces or entrusts the production of one or more objects infringing the rights of the patent’s owner.
- anyone importing, selling, exhibiting or introducing in Argentina one or more objects infringing the rights of the patent’s owner.
- anyone who, being partner, mandatory, adviser, employee or worker of the inventor or his legal successors, appropriates or discloses the invention still not protected;
- anyone who, corrupting the partner, mandatory, advisor, employee or worker of the inventor or his legal successors, obtains the disclosure of the invention;
- anyone violating the bound of secrecy imposed in the Patent Law.
A fine may be imposed on anyone who, not being the owner of a patent or not being the beneficiary of such rights anymore, uses in its products or in its advertising designations capable of inducing the public into error with respect to their existence.
Criminal participation and complicity are applied in accordance with the Argentine Penal Code.
In addition to the penal actions, the owner of the patent and his licensee may start civil actions for the forbidding of the continuation of the illegal exploitation and to obtain a compensation for the prejudice suffered.
Provisional remedies:
- Seizure of one or more samples of the objects under infringement, or the description of the incriminated process;
- Inventory or embargo of the forged objects and of the machines specially destined for the manufacturing of the products or for the performance of the incriminated process.
Anyone having in his possession objects under infringement must provide complete information concerning the name of the person that has sold or supplied said objects, the amount and value of those objects as well as the time the products began to be sold, under penalty of being considered an accomplice to the infringer.
The plaintiff may demand a bailbond from the defendant in order to prevent the same from interrupting the exploitation of the invention. In case the latter wishes to continue with said exploitation, and, in the absence of the bailbond the former may ask for the suspension of such exploitation providing him a convenient bailbond, in the case it were requested.
To the effects of civil proceedings, when the object of a patent is a process to obtain a product, the judges are empowered to demand from the defendant evidence showing that the process to obtain a product is different from the patented process. To this effect it is considered that, if there is no evidence showing the contrary, all identical product produced without the consent of the owner of the patent has been obtained through the patented process provided that said product is new.
Federal judges having jurisdiction in Civil and Commercial Matters are competent concerning civil actions. The Federal Judges having jurisdiction in Criminal and Correctional Matters are competent concerning penal actions.
Legal Actions Flow Chart

PARALLEL IMPORTS AND EXHAUSTION OF RIGHTS:

The right conferred by a patent does not produce any effect against any person who purchases, uses, imports or in any form markets the patented product or obtained by the patented process, once said product has been legally placed in the market in any country. The marketing is considered legal when it complies with the Agreement of Intellectual Property Rights Related to Commerce, Part III Section IV GATT-TRIP’S

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