Miranda y Asociados

UTILITY MODELS IN ARGENTINA

CONCEPTS:

An utility model is a new disposition or shape obtained or introduced in tools, working instruments, utensils, devices or known objects suitable for practical work, with respects to a better utilization for the function for which they are destined. The deed, denominated utility model certificate, confers on their creator the exclusive right to exploit it.
This right is granted only to the new shape or disposition as it is defined, but an utility model certificate is not granted within the scope of protection of a patent of invention in force.
Priority basis: first-to-file

LEGISLATION:

Patent and Utility Model Law Nº 24.481 of March 30, 1995, amended by Law Nº 24.572 (T. O. 1996) of 18 October 1995.
Argentina is a party to the Paris Convention.
Argentina is not a member of the PCT.
GATT-TRIPS

REGISTRABILITY:

Novelty: Absolute novelty is required.Accordingly, publication, offer for sale or public use in Argentina or abroad before the application date (or the priority date under the Paris Convention) affects the novelty. However, it is considered that the novelty is not affected when it is the applicant who makes known or discloses abroad the invention within 6 months before the filing of the application in Argentina.
Inventive activity is not required.
Industrial application: The term “industry” comprises transformation industries, manufactures, agriculture, forestry industry, industry pertaining to cattle breeding, fishing industry, mining, and services.
Utility models are not registrable 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.

UTILITY MODEL TERM:

The utility model certificates is valid for a term of ten (10) years, as from the date of filing of the application.

APPLICANTS:

All physical or legal entities, national or foreign, are entitled to obtain utility models.
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 utility model application.
The invention made by an employee in the course of his employment contract, or during his service or labor relation, will belong to the employer if the purpose of such contract or relation involves partially or totally inventive activities.
When a utility model 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.

APPLICATION:

Together with the application for an utility model certificate the following must be enclosed:
- A description referred to a single main object of the new configuration or disposition of the object for practical use, of the functional improvement, and of the relation between the new configuration or disposition and the functional improvement, in such way that the invention can be reproduced by a person skilled in the art, and an explanation of the drawing or drawings;
- The claim or claims referring to the invention.
- The necessary drawing or drawings.

RIGHTS:

The right to the utility model belongs to the inventor or his successors in law who have the right to assign or transfer it through any lawful means and to make license agreements. The utility model confers on its owner the exclusive rights 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 utility model without consent.
If the owner of the utility model becomes aware of the importing of goods under infringement, in accordance with the Law, he/she may start actions in the legally corresponding administrative or judicial headquarters.

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.

PROCEDURE:

Preliminary examinations: The Patent Office performs prieliminary examinations for technical and administrative formalities and may require to state precisely or to clarify what the mentioned entity considers necessary or to correct omissions. If the applicant does not comply with such requirement within a term of a 180 days, such application is considered abandoned.
The application is published within eighteen (18) months, as from the date of filing. Upon the applicant’s request, the application may be published before the stated term is due.
Substantive examination: It must be requested before three (3) years as from the filing. Otherwise the application will be considered abandoned. The examination will 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 examinations performed for the same invention by foreign Patent Offices, if they were available.
Any person may raise objections based on the utility model application and enter documentary evidence within a term of sixty (60) days as from the publication. The objections may consist in the lack or insufficiency of the legal prerequisites for the granting. The examiner may include, among his observations, the ones lodged by third parties.
Within sixty (60) running days as from the date of the notification of the 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, having previously done a report specifying the reasons why, issues another office action to the applicant and advise to the Patent Office to refuse the applications.
When all the corresponding requirements are approved, the Patent Office proceeds to issue the letters utility model.
The granting of the utility model 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 utility model is published in the Utility model Gazette.
The reconsideration appeal may proceed:
- against a decision refusing the granting of a utility model;
- against a decision giving rise to the foreseen observations.

NULLITY:

Utility models 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.

MAINTENANCE:

Annuities are required to keep the utility model in force.

ASSIGNMENTS:

The utility models may be assigned and licensed totally or partially. The assignment of the utility model becomes enforceable against third parties, only after it is recorded before the Patent Office. The licensee has the right to exercise the legal actions that correspond to the owner of the utility model 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.
- Power of Attorney signed by the asignee, unless included in the assignment document.
- Original certificate.
Documents must be in Spanish or filed together with a sworn translation.

ENFORCEMENTS OF RIGHTS:

The infringement of the inventor’s rights is considered to be counterfeit and punishable by imprisonment and on 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 owner of the utility model.
- anyone importing, selling , exhibiting or introducing in Argentina one or more objects infringement the rights of the owner of the utility model.
- 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 who violates the bond to secrecy imposed in this Law.
A fine may be imposed on anyone who, not being the owner of a utility model certificate 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 respecting their existence.
Criminal participation and complicity may be applied in accordance with the Penal Code.
In addition to the penal actions, the owner of the utility model certificate -or 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.
Previous to the lodging of the utility model certificate, the plaintiff may request under the guarantees the judge considers necessary, the following provisional remedies:
- the seizure of one or more samples of the objects under infringement,
- the inventory or the embargo of the forged objects and of the machines specially destined for the manufacturing of the products.
Anyone having in his possession objects under infringement must provide complete information concerning the name of the person that had sold or supplied said objects, the amount and value of those objects as well as the time the products began to be sold, under the penalty of being considered an accomplice of 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 the case that the latter wishes to continue with said exploitation, and, in the absence of the bailbond the former may ask the suspension of such exploitation providing him a convenient bailbond, in the case it were requested for.
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.

PARALLEL IMPORTS AND EXHAUSTION OF RIGHTS:

The right conferred by a utility model does not produce any effect against any person who purchases, uses, imports or in any form markets the utility modeled product once said product has been legally put 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 TRIP’S-GATT Agreement.

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