Patents in Argentina

1. OVERVIEW

There are constitutional provisions for patents.

Argentina is a party to the Paris Convention.

Argentina is NOT a member of the PCT. Consequently, the patent application has to be filed within one (1) year from the original application (if Convention priority is invoked) or prior to the publication (if priority is not requested). If the original PCT application has already been published, the novelty will be affected, and the invention will be considered to be in the public domain in our country.

Please click here to see a patent procedure timeline.

An invention may be protected by means of a patent if it is novel, involves an inventive step, is susceptible of industrial application, if it does not fall within the exclusions from patentability, and if it is clearly and sufficiently disclosed in the application.

• 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) 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 affect 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 applicability: There shall be industrial applicability where the subject matter of the invention causes an industrial result or product to be obtained, industry being understood as including agriculture, forestry, livestock breeding, fisheries, mining, processing industries in the strict sense and services.

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.

Plants, animals, and essentially biological processes for their reproduction are not patentable. However, genetically modified microorganisms are patentable in Argentina.

Living matter and substances pre-existing in nature, even if they are purified or isolated, are considered as discoveries and are not patentable.

On the other hand, 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.

Pharmaceutical products are patentable in Argentina. However, in May 2012, the Ministry of Industry and the Ministry of Health together with the Patent Office, issued Joint Resolution 118/2012, 546/2012 and 107/2012.

This Resolution contains very restrictive criteria concerning the allowable scope and type of claims in the chemical and pharmaceutical fields. As an example, new formulations and compositions as well as their preparation methods are now considered, as a general rule, obvious in light of the prior art.

The extrapolation of these standards to biotech pharmaceutical inventions is analyzed on a case-by-case basis.

Click here to see a more detailed explanation of the resolution.

A computer program, claimed by itself or as a recording on a data carrier, is not patentable, regardless of its content, because it was not intended as a technical work. The same applies when said computer program is executed by a known computer.

However, if the claimed subject-matter has a technical character, and makes a technical contribution to the prior art, patentability should not be denied merely because a computer program is involved in its implementation.

In other words, any invention related to computer programs providing a technical solution to a specific problem in the technical field may be considered patentable.

Click here to see a more detailed explanation of the patentability of computer-related inventions in Argentina.

The application must disclose the invention in a sufficient and clear way so as the invention may be reproduced by a person with skills in the specific technical field. The applicant should further disclose the best way to carry out the invention. No additional subject matter can be added to that of the originally filed in the application.

All physical or legal entities, national or foreign with actual or legal domicile in Argentina, 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.

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.

The patent is valid once granted and has a duration of twenty (20) years counted from the application date.

2. FILING REQUIREMENTS

Full name and address (including city, state, postal code and country of residence) of the applicant(s) must be informed at the moment of filing. In the case of natural persons, the following information must be stated in the application form:

a. ID number (e.g. passport number) of the applicant(s) and country of issuance;
b. Marital status (if married, it must be indicated whether it is a first marriage or a remarriage);
c. If married, complete name and ID number of the spouse of the applicant(s).

If there are two or more applicants, the right will be equally divided among them unless stated to the contrary in the Application Form.

A patent application consists of an Application Form, Cover Sheet, Specification, Claims, Drawings (if necessary), and Abstract. They must be filed in Spanish; otherwise, a translation into Spanish by an Argentine Sworn Translator, legalized by the Association of Translators of Buenos Aires, must be filed within the next ten (10) working days.

The set of claims must define the subject matter for which protection is sought, and must be clear and concise. Said claims can be one or more and have to be based on the description without exceeding it.

The first claim is the only independent claim admitted and it must refer to the main subject matter. The remainder of the claims must be subordinated to the first one.

The claims must contain:

a. 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
b. a characteristic part where the elements establishing the novelty of the invention must be mentioned.

Although there is no limit to the number of claims that can be included in the application, where the set of claims exceeds ten (10) clauses, an additional fee must be paid for each additional claim over the first ten (10) clauses.

Voluntary amendments. From the filing date and until thirty (30) days after said date, the applicant can file complements, corrections and modifications to the patent application, as long as no subject matter is added. After that date, voluntary amendments will be subject to the acceptance of the examiner.

The documents required for filing a patent application in Argentina are listed below.

1) Power of Attorney, notarized and legalized (by Apostille or by the Argentine Consulate) must be dated prior to the filing date in Argentina.

2) If an international priority under the Paris Convention is claimed, the following are the requirements:

a. Country, date and number of the priority application;
b. Priority document (if required by the Patent Office);
c. Original or Certified Copy of Assignment of Priority Rights.

2) a. Country, date and number of the priority application: The country and date of the priority application must be stated at the moment of filing the application. The application number should be provided at the moment of the filing, if available, but can be stated later on.

2) b. Priority document. It can be requested by the Examiner during the Substantive Examination stage. Should that be the case, the applicant will have three (3) months to submit the certificate in electronic or digital format. This document does not require legalization. Electronic priority documents issued by the corresponding Office as well as scanned copies of physical certificates are allowed. If the priority document is in a language other than Spanish, its Spanish translation, verified by an Argentine Sworn Translator must be filed within three (3) months from the filing date of the application in Argentina.

Some PTOs can issue bilingual priority certificates. If the priority certificate is issued in the original language and Spanish, there are no other formal requirements other than filing the certified copy of the priority certificate. If the priority certificate is issued in English, we can translate the priority certificate into Spanish ourselves and have it verified by an Argentine Sworn Translator.

On the other hand, if the PTO can only issue priority certificates in a language other than English or Spanish, then there are two options:

i. With a sworn translation from the original language to English, duly signed and stamped by the sworn translator and legalized (by Appostille or by the Argentine Consulate) in order to certify that the person who translated the document is indeed a sworn translator. Once we receive the priority document and the legalized sworn translation we can translate the latter into Spanish and have it verified by an Argentine Sworn Translator. This also applies to Assignment of Priority Rights documents.
ii. We can have the priority document translated directly by an Argentine Sworn Translator. This is usually the most expensive option since Argentine Sworn Translators specializing in languages other than English charge very high rates. This also applies to Assignment of Priority Rights documents.

2) c. Original or Certified Copy of 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. Should the priority certificate be requested during the Substantive Examination stage, the applicant will have three (3) months to file the Assignment of Priority Rights document. If this document is not in Spanish, then it must be filed together with a Spanish translation, verified by Argentine Sworn Translator. This document does not require notarization nor legalization as long as it is the originally signed document.

i. If the priority application was filed by more than one applicant, the signature of only one of them is sufficient to assign the priority rights of the application.

ii. The assignment form provided above has retroactive effects. If this form is not used, it should be noted that the assignment must be dated either prior to the filing date of the application in Argentina, or the priority date, whichever is later.

iii. If the title of the invention is stated in the assignment document instead of the application number, then the ARPTO will issue an office action requesting a new assignment document.

If the above requirements are not complied with, the right of priority will be lost.

If the invention was previously disclosed no more than a year before the application date, the Applicant must declare such disclosure in the application form and submit with this:

a copy of the means of communication by which it was disclosed;
i. in the case of an audiovisual medium: declaration of date, medium and geographical location;
ii. if the invention was exhibited: evidence of participation in the event.

For applications relating to microorganisms, or relating to inventions that require the use of microorganisms that are not publicly known, deposit of the microorganism is required.

The applicant must provide the following information:

a. full name and address of the Depositary Institution where the microorganism was deposited;
b. date of deposit; and
c. the registration number given to the microorganism by the Institution where it was deposited.

The ARPTO shall acknowledge as able to receive microorganisms to be deposited, to the effects of what has been prescribed in article 21 of the Law, the institutions acknowledged by the WIPO or those institutions which comply with the following conditions:

a. to be permanent;
b. not depending upon the control of the depositors;
c. to have adequate personnel and premises so as to control the pertinence of the deposit and to guarantee its storage and conservation without risk of contamination;
d. to supply the necessary security measures to reduce to a minimum the risks of losing the deposited material.

If an application discloses nucleotide and amino acid sequences which correspond to the definitions given in the WIPO Standard S.T. 25, Annex C, item 2, the sequences must be represented in a sequence listing according to Annex C, items 3 et seq. The sequence listing should be filed as an integral part of the specification at the time of submitting the application. In addition to the inclusion in the specification, the sequence listing must be accompanied in electronic format.

3. PROCEDURE

An official search may be requested at the ARPTO based on bibliographic data (e.g. priority) or a topic.

On the other hand, a patent surveillance about either a subject within a specific technological field or an organization such as a competitor may also be requested at the ARPTO. This service consists of a one-year term of patent surveillance; the PTO will provide three (3) reports with updates relating to new patent applications within a specific technological field or submitted by a particular organization or inventor.

Preliminary examinations: The Patent Office performs two preliminary examinations; one for technical formalities and the other for administrative formalities, and may order the publication of the application or raise official actions. If the applicant does not respond to the official action within a term of thirty (30) days, the application will be considered abandoned.

Publication: The application is published after approximately eighteen (18) months counted from its filing date. Upon the applicant’s request, the application may be published earlier.

Observation by third parties: Any person may lodge objections regarding the lack of novelty, industrial applicability, inventive step or illicitness of the subject matter and enter documentary evidence within a term of sixty (60) days as from the publication date.

Attention Call: When the term to lodge oppositions has elapsed, an attention call may be filed. The attention call can be filed at any time while a patent application is pending. The difference between an opposition and an attention call is that the former will be included in the Examiner’s report at the moment of performing the Substantive Examination while the latter might not be taken into consideration by the Examiner.

Substantive Examination: It must be requested before eighteen (18) months as from the filing date. If the substantive examination is not requested (i.e. the corresponding fees are not paid) within that term, the application will be considered abandoned. There are no extensions of time regarding the deadline to request the substantive examination.

The substantive examination can be requested at any time between the filing date of the application and one and a half years counted from that date. At the moment of requesting the examination, an additional fee must be paid for each additional claim over the first ten (10) clauses. The number of claims exceeding the first ten (10) clauses is taken from the set of claims approved in the preliminary examinations stage.

Independent patent applications are examined in the order in which they were filed. There is an exception to this rule: please click here for more information on this matter.

Divisional patent applications are examined along with their parent application.

The majority of office actions (O.A.) can be grouped as follows:

1) Clarifications Prior to the Substantive Examination

a. The Patent Office may request the applicant to submit a copy of the substantive examination performed by foreign Patent Offices for the same invention, if available.
b. Clarity: the Examiner may object the clarity or the patentability of part (or the entirety) of the set of claims. After filing the response, the Substantive Examination will be performed whether the objections are surmounted or not.
c. Having detected that the application claimed as priority in the Argentinean application has been granted or that an homologue patent (i.e. with the same subject matter as the Argentinean application) has been granted by a Patent Office having similar examination standards to those of the ARPTO, the Examiner may invite the applicant to take advantage of Resolution No. 56/2016, by which the Argentinean application will be rapidly granted in the case that the applicant pays the relevant fee and amends the scope of the set of claims of the application to that of the granted foreign patent. The Examiner can nevertheless include patentability or clarity objections to some of the claims in the report. The term to file the response to this O.A. is ninety (90) running days counted from its notification date. Please click here for more detailed information on Resolution No. 56/2016.
d. The Examiner can also object the lack of unity of invention. If the Examiner considers that the claimed subject matter comprises more than one invention, then he/she will invite the applicant to restrict the scope of the patent application to one invention and, optionally, to file one or more divisional applications in order to protect the other one or more inventions. Divisional applications may be filed at any time while the parent application is pending. The deadline for requesting the corresponding substantive examination is the same as the parent case. Therefore, if the divisional application is filed after eighteen (18) months from the filing date of the parent application, the substantive examination must be requested at the moment of filing the divisional application. The duration of a divisional application is of twenty (20) years counted from the filing date of the parent application. The term to file the response to this O.A. is thirty (30) working days counted from its notification date.
e. The Examiner may request the applicant to convert the patent application into a utility model. The term to file the response to this O.A. is thirty (30) running days counted from its notification date. In the case that the applicant fails to convert the application within said term, it will be considered abandoned. The applicant may request such conversion voluntarily during the term of thirty (30) running days from the application date. If the voluntary conversion request is made after the referred term, it will not be accepted.

2) Substantive Examination: if the claimed invention lacks novelty, inventive step or industrial applicability in the opinion of the Examiner, then an O.A. will be issued. Within the term indicated in the official communication, the applicant must:

a. amend the application for it to comply with the legal and regulatory requirements; or
b. express his/her opinion about the observations set forth by the Examiner, refute them or formulate the clarifications he/she considers pertinent or convenient.

3) Last Report before Final Resolution: When the observations set forth in the Substantive Examination are not satisfactorily addressed by the applicant, the Examiner issues another O.A. and advises the Patent Office to reject the application.

In all cases, the terms for replying to office actions will begin thirty (30) calendar days after the publication of the office action in the Patent Gazette.

There are three thirty (30) calendar-day extensions of time available to respond any of the above O.A. These extensions of time are automatically granted and the payment of the corresponding official fees must be done at the moment of filing the response according to the number of extensions used or the application will be considered abandoned.

If the applicant does not file the response to an O.A. in the mentioned term plus the three (3) extensions of time (if available), the application is abandoned.

When all the corresponding requirements are approved, the Patent Office proceeds to issue the letters patent. The announcement of the grant of the patent is performed electronically in the ARPTO’s website indicating the granted patent number. In said publication, the ARPTO also informs the applicant to claim the patent certificate at the P.O.; otherwise, the certificate will be archived.

The grant of the patent takes place without prejudice to any third party claim to a stronger right than the applicant, and without any guarantee from the State of the usefulness of its subject matter.

Please click here to see a patent procedure flow chart, or here to see a Patent Procedure timeline.

Appeals against the ARPTO may proceed:

a. against a definitive act, namely the refusal of a patent; or
b. against an act that is not definitive but causes some type of prejudice to the Applicant’s right.

The types of appeal can be summarized as follows:

1. Reconsideration appeal: It is submitted before, and resolved by, the same authority which issued the administrative act, that is, the National Patent Administration. The term to file this appeal is of ten (10) working days from the notification date of said act. The hierarchical appeal, in subsidy, is implicit in the previous one. If the decision is not reversed in this area, the legal department will further study the matter, in which case the applicant will be informed and given five (5) additional working days to broaden the grounds of the appeal.
2. Hierarchical appeal: It is submitted before the same authority which issued the administrative act, that is, the National Patent Administration (NPA). The matter will be brought to the NPA’s Legal Department for its resolution. The term to file this appeal is of fifteen (15) working days from the notification date of said act.
3. Appeal before a higher authority: It is submitted before the same authority which issued the administrative act, that is, the NPA, or the presidency of the National Institute of Industrial Property. The matter will be 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.
4.  Reconsideration appeal provided by Article 72 of Patent Law: Only valid when the act is the refusal of a patent or utility model. It is submitted before the same authority which issued the administrative act, that is, the NPA, or the presidency of the National Institute of Industrial Property. The presidency will resolve the matter. The term to file this appeal is of thirty (30) working days from the notification date of said act.

In the event that the refusal of a patent is confirmed in the administrative instance in response to the appeal, there will be thirty (30) working days from the notification of the final decision to file a legal action.

The lawsuit must be initiated at the ARPTO accompanying the corresponding evidence. Later, the case is brought to the Federal Civil and Commercial Chamber where the court is raffled.

Once the judge is notified, there is a term of six (6) months to submit additional evidence. The evidence may consist of documentation, such as grant certificates of homologous foreign patents, evidence provided by an expert (designated by the Court), evidence of a technical consultant, and informational evidence. All the documentation must be certified and legalized. In case the language is different from Spanish, it must be translated into Spanish by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

After said six (6) months term, the ARPTO has sixty (60) days to respond.

Subsequently, the opening to test, the production of evidence offered by the parties and the allegations occur.

Finally, the judgment of first instance is ruled. In case it is not favorable, the client can decide to appeal to the Chamber. If the second instance judgment is also not favorable, the last possibility is to file an extraordinary appeal to the Supreme Court.

4. POST-GRANT PROCEEDINGS

A patent is a proprietary right granted by the Federal government pursuant to laws passed by Congress.

A patent does not confer the right to use nor to exploit the technology covered by it; instead, a patent confers the following rights on the owner:

a. Where the subject matter of the patent is a product, the right to prevent third parties from engaging without his/her consent in acts of manufacture, use, offering for sale, sale or importation of the product covered by the patent.

b. Where the subject matter of the patent is a process, the right to prevent third parties from engaging, without his/her consent, in the act of utilization of the process and in the acts of use, offering for sale, sale or importation to these ends, the product obtained directly by means of said process.

Any person who improves a patented invention is entitled to apply for a patent of addition as long as the parent patent is in force. Otherwise, the new application will be considered to be independent from the original invention.

Patents of addition are granted for the remainder of the lifespan of the patent of invention on which they depend. If there are two or more such patents, the one that expires last will be taken into account.

After a patent is granted, the owner must pay annual fees to keep the patent in force. If the annuities are not paid within the term established by law, there is a 180-day grace period to carry out the payment of the updated fees (i.e. including the corresponding surcharges), after which the patent will lapse under inc. C., article 62 of Law No. 24.481 (1996), and Art. 4, of Resolution D-158 of August 11, 1998.

First and second annuities are complimentary.

Annuities are due only when the patent is granted and payments must be made in advance to each year.

For independent patents, annuities that are due until that moment (counted from the third annuity) must be paid prior to the first anniversary of the filing date following the notification date of the grant. From that moment on, each remaining annuity must be paid prior to the anniversary of the filing date.

Divisional patents have the same effective filing date and anniversary date as the independent patent. Annuities due at the moment of granting (counted from the third annuity) should be paid prior to the first anniversary of the filing date following the notification date of the grant. From that moment on, the annuities due will coincide with those of the parent patent (both in number and corresponding fee).

Patents of addition have their own filing date but the same anniversary date as the parent patent. When the patent of addition is granted, the annuity that must be paid coincides with the anniversary year of the parent patent. For example, if the parent patent is in its 12th year of protection, then the annuity due at the moment of the grant the patent of addition will be the 12th annuity. From then on, the annuities due will coincide with those of the parent patent (both in number and corresponding fee. Additionally, the due date to effect the payment of the above-mentioned annuity is the following anniversary date of the parent patent. Therefore, when the PTO notifies the Applicant that the patent of addition has been granted, two annuities will be due and must be paid on the next anniversary date of the parent patent as from the notification date of the grant.

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 product 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-TRIPS.

The right of exploitation conferred by a patent shall be granted, without the permission from the owner thereof, when the competent authority had determined that the patent owner had engaged in anti-competitive practices.

Anti-competitive practices are considered to be, among others, comparatively excessive prices compared to the market average, refusal to supply the local market on reasonable commercial terms, and the obstruction of marketing or production activities.

The use without authorization from the owner of a patent so as to allow the exploitation of a patent (second patent) that cannot be exploited without infringing another patent (first patent) shall be granted, provided that the following conditions are met:

a. The invention claimed in the second patent must represent significant technical progress, of considerable economic importance, compared with that claimed in the first patent;

b. The owner of the first patent shall be entitled to cross-licensing on reasonable terms for the exploitation of the invention claimed in the second patent; and

c. The authorized use of the first patent may not be assigned without assignment also of the second patent.

Patent’s working requirements should be fulfilled before the expiration of a period of four (4) years from the filing date of the patent application or three (3) years from the grant of the patent, whichever period expires last.

Exploitation (working) of a product is deemed to exist when there is sufficient distribution and marketing efforts to satisfy the demand of the domestic market on reasonable commercial terms.

Having these terms elapsed, if the invention has not been worked, unless this was caused by force majeure, or serious and effective preparations have not been effected for the exploitation of the invention which is the subject matter of the patent, or when the exploitation of said patent has been discontinued for the term of one (1) year, any person shall be allowed to apply for an authorization to use the invention without the authorization from its owner.

It shall be considered force majeure, in addition to such legally recognized causes, the objective difficulties of technical and legal character, such as delays in obtaining registration with the authorities to secure marketing authorization that are beyond the control of the owner of the patent and make the exploitation of the invention impossible. Lack of financial resources or the lack of economical viability of the exploitation shall not in themselves constitute justification.

A prospective user may request before the authority of application the granting of an obligatory license for the manufacture and selling of the patented product or the use of the patented process if he/she can accredit his/her attempts to secure the grant of a license from the owner of a patent on reasonable commercial terms and conditions and such attempts were unsuccessful after a term of one hundred and fifty (150) running days as from the date in which the respective license had been applied for and that the technical and commercial conditions to supply the internal market are met.

The ARPTO shall notify the owner of the patent the non-fulfillment of the above provisions before allowing use of the patent without authorization from said owner.

The implementing authority, after having heard the parties, and if they do not reach an agreement, shall establish a reasonable remuneration that the owner of the patent shall receive, which shall be set forth in accordance to the circumstances of each case and taking into account the economic value of the authorization, bearing in mind the average rate royalty payable in the sector concerned under contractual licenses between independent parties.

The patent shall lapse when the invention, assigned to third parties by compulsory licenses, is not worked for a term of two (2) years due to causes attributed to the owner of the patent.

The Patent Office does not settle legal disputes between parties; all legal disputes are settled by the Federal Court. Please click here to see a schematic overview of the procedures relating to Legal Disputes in IP matters in our country.

Patents granted in violation of the Law are wholly or partly null and void.

Any person (individual or company) with a legitimate interest may bring a nullity action with the Federal Courts.

The decision can be appealed to the Chamber of Appeals and, under certain considerations, to the Supreme Court.

The infringement of the inventor’s rights is considered as counterfeit and punishable by imprisonment and fine.

This penalty is also applicable to:

a. anyone who knowingly produces or causes to be produced one or more objects in violation of the rights of the patent’s owner;
b. anyone importing, selling, exhibiting or introducing in Argentina one or more objects in violation of the rights of the patent’s owner;
c. anyone who, being partner, agent, advisor, employee or worker of the inventor or his legal successors, appropriates or discloses the invention while it is still unprotected;
d. anyone who, by corrupting the partner, agent, advisor, employee or worker of the inventor or his legal successors, obtains the disclosure of the invention;
e. anyone violating the obligation 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 anymore the beneficiary of such rights, 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 criminal actions, the owner of the patent of invention and his/her licensee or the owner of the utility model, may bring civil actions seeking the prohibition of continued unlawful exploitation and compensation for any prejudice sustained.

Precautionary measures:

a. Seizure of one or more samples of the objects under infringement, or the description of the incriminated process;
b. The inventory or the embargo of the offending articles and of the machines specially designed for the manufacture of the products or to the performance of the offending process.

Any person having in his/her possession infringing goods must provide a full account of the name of the person sold them to him/her or procured them for him/her, the quantity and value thereof as well as the time at which the retail sales began, on pain of being considered an accomplice of the infringer.

The plaintiff may demand security of the defendant in order to avoid interrupting the exploitation of the invention. In case the latter wishes to continue said exploitation, and, in the absence of the bail bond, the former may request the suspension of such exploitation providing a convenient bail bond, in the case it were requested.

To the effects of civil proceedings, when the subject matter 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, if there is no evidence to the contrary, all identical products produced without the consent of the owner of the patent will be considered as having been obtained by means of 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.

5. ASSIGNMENTS & CHANGES OF NAME

ASSIGNMENTS

Patents may be transferable and licensed, either fully or in part. The assignment of the patent shall become enforceable against third parties, only once it has been recorded before the ARPTO. The Law also provides that the licensee will have the right to bring such legal actions as are available to the owner of the inventions, only where the said owner does not bring them himself/herself.

The following are the required documents for recording an assignment:

a. Assignment document: Must be signed by both parties. If a party is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Patent Application Assignment Form, please click here. If the Patent has been granted, please click here.
b. Original certificate of registration in Argentina if the patent has been granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the party, notarized and legalized (by Apostille or by the Argentine Consulate), unless included in the assignment document, is also required.

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The following are the rules regarding consideration:

a. Consideration need not be stated.
b. A nominal consideration may be stated.
c. The amount of U$S 1.00 is acceptable.

Assignments may be made with or without goodwill and it is not necessary to refer to goodwill in the deed.

Pending applications may be assigned. The assignment will be recorded prior to its registration.

The procedure starts with the filing of the assignment form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.

The PTO will conduct a study verifying that the filed documents meet the formal requirements.

Once the assignment has been approved by the PTO, the Office will issue a notification certifying that, in light of the filed documents, the assignment has been recorded in favor of the assignee. This document issued by the ARPTO is the proof of the assignment.

CHANGES OF NAME

The following are the required documents to record a Change of Name:

a. Change of name document (Certificate of Registry), signed by a notary attesting the change of name, and legalized by Apostille or by the Argentine Consulate. Please click here to download a Change of Name Form. Otherwise, a legalized certification of change of name of the company, issued by the competent authority in the corresponding country, must be filed.
b. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The procedure starts with the filing of the change of name form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.

The PTO will conduct a study verifying that the documents submitted meet the formal requirements.

Once the change of name has been approved by the PTO, the Office will issue an ownership update stating that a change of name has been filed and also certifying that, in light of the filed documents, the change of name was recorded in favor of the assignee. This document issued by the ARPTO is the proof of the change of name.

The registrant may effect all post-recordation actions under the new name.

MERGERS

Recordation before the ARPTO is required.

The following are the necessary documents to record a Merger:

a. A certificate attesting the merger issued by the Registry of Companies or by Notary Public or by any other competent authority according to the laws of the country where the merger took place. Legalization by Apostille or by the Argentine Consulate is required. Otherwise, it is also acceptable to submit an assignment document signed by both legal representatives (it can be the same person). If a legal representative is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Patent Application Assignment Form, please click here. If the Patent has been granted, please click here.
b. Original certificate of registration in Argentina if the patent is granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The transfer to the surviving entity of rights arising from registration becomes effective against third parties.

6. LEGISLATION

Patent and Utility Model Law No. 24.481 of March 30, 1995, amended by Law Nº 24.572 of October 18, 1995, Decree No. 260 of March 20, 1996 and Law No.27.444 of June 18, 2018.

Argentina is a party to the Paris Convention.

Argentina is not a member of the PCT.

GATT-TRIPS

Wipo’s Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications S.T. 25

Joint Resolution (2012) Directed to Pharmaceutical Patents

Pharmaceutical products are patentable in Argentina. However, in May 2012, the Ministry of Industry and the Ministry of Health together with the Patent Office, issued Joint Resolution 118/2012, 546/2012 and 107/2012.

This Resolution contains very restrictive criteria concerning the allowable scope and type of claims in the chemical and pharmaceutical fields.

The most prominent aspects of the Resolution are summarized below:

• Polymorphs: claims directed to polymorphs resulting from the mere identification and/or characterization of a new crystalline form of a known substance will not be accepted. Furthermore, the processes by which polymorphs are obtained will not be considered patentable since they constitute a routine experimentation in drug preparation.
• Pseudo-polymorphs (hydrates and solvates): considered in the category of polymorphs by the ICH, and thus, will not be considered patentable separately or independently of the corresponding active principle. The processes by which they are obtained will also not be considered patentable.
• Enantiomers: by revealing the molecular structure of a racemic compound, the person with ordinary skills in the art would necessarily also know the existence of its enantiomers and diastereomers and therefore, enantiomers will not be considered patentable. However, processes for the obtention of individual enantiomers may be patentable if the appropriate description of the process and of the obtained results (by way of spectroscopic data) has been included in the patent application.
• Markush formulas: must be limited to what can be effectively reproduced based on the disclosure contained in the specification (which must comprise examples of the combination of the different substituents and be representative of the totality of the claimed matter). Otherwise, the claims must be restricted to the compounds for which examples have been provided and contain all information related to its characterization such as infrared spectroscopy, 1HNMR, 13CNMR, etc.
• Selection Patents: the disclosure of a group of chemical compounds (Markush formula) or of groups of pharmaceutical formulas even in a generic form will be considered as disclosing all the components of said group which will be considered as forming part of the state of the art. Therefore, no novelty will be derived from the selection of an element or elements already disclosed in the prior art even when they present different or superior properties which were not previously demonstrated
• Salts, esters and other derivatives of known substances: will be considered as identical to the known compound and therefore will not be considered patentable.
• Active metabolites: will not be patentable separately of the active principle from which they derive even when their security and efficacy profiles differ from those of the parent molecule.
• Prodrugs: patents covering prodrugs, if granted, should exclude from the claims the active principle as such, if such active principle has been disclosed or if it is not patentable.
• Formulations and compositions: new formulations and compositions as well as their preparation methods will be considered, as a general rule, obvious in light of the prior art (this also applies to formulations and compositions related to polymorphs). Additionally, claims referring to pharmacokinetic parameters, such as T max, C max, etc. will not be considered admissible. As an exception, claims for a formulation will be considered admissible when they resolve, in a non-obvious way, a longstanding problem.
• Combinations: claims directed to combinations of previously known active principles will be considered in practical terms as equivalent to medical treatment claims (the patentability of which is excluded).
• Dosage/Dose: claims directed to the dosage of a known product shall not be patentable given that they are equivalent to claims directed to medical treatment methods since dosage is not a product nor a process.
• Second medical use claims: they are considered as a method of therapeutic treatment and lack industrial applicability. Hence they are not patentable. The same also applies even if the claim is drafted in Swiss-type form.
• Analogous processes: Synthesis or manufacturing processes which are not by themselves novel and inventive will be considered as non-patentable even when the starting materials, the intermediaries or the final product are novel and inventive

Furthermore, the Resolution states that the extrapolation of these standards to biotech pharmaceutical inventions is to be analyzed on a case-by-case basis.

In the past years, these guidelines have led to escalating delays at the National Institute of Industrial Property (INPI) regarding the prosecution of chemical and pharmaceutical patent applications (since these guidelines were also applicable to patent applications that were pending before the PTO at the moment of its issuance).

Our point of view is that most of the contents of the Resolution are unconstitutional since they contradict norms and laws which according to our legal system have higher hierarchy and carry more weight than the present Resolution. Consequently, we consider that the application of the Resolution might generate a number of administrative appeals and judicial cases in the future.

Resolution No. 318-2012 Directed to Computer-Related Patents

As from Resolution No. 318/2012 issued by the ARPTO in 2012, the following remarks apply to computer related patents in Argentina:

A computer program, claimed by itself or as a recording on a data carrier is not patentable, regardless of its content, because it was not intended as a technical work. The same applies when said computer program is executed by a known computer.

The PTO based the above statements on the following ground: any claim seeking protection for any of the subject matters or activities listed in the exclusions set out in Article 6 of Patent Law No. 24.481 should be rejected regardless of the devices or methods used to carry them out. Computer programs are indeed listed in that Article and, therefore, excluded from patentability.

However, if the claimed subject-matter has a technical character, and makes a technical contribution to the prior art, patentability should not be denied merely because a computer program is involved in its implementation.

Additionally, in the case of applications related to computer programs it is necessary to clearly define the technical effect produced by the implementation of the invention. When the technical effect actually takes place, even if it is a known effect, the invention will be patentable provided it meets all other requirements such as novelty, inventive step and industrial applicability. This technical effect must go beyond the “normal” physical interactions between the program and the computer on which it is run.

Although no precise definition of the term “technical effect” has been established, the technical effect that goes beyond the normal physical interactions between the program and the computer on which it is run would occur, for example, when a physical magnitude (speed, temperature, time, luminosity, space, etc.) is modified.

Furthermore, an invention may be found to be of a technical nature based on the technical effects obtained through execution, by the computer hardware of the commands contained in the computer program, if such effects solve a technical problem.

In other words, any invention related to computer programs providing a technical solution to a specific problem in the technical field may be considered patentable.

Resolution No. 56/2016 – Patent Fast-Track

This Resolution is based on, and revokes, prior Resolutions No. P-263/03 and No. P-125/09.

By means of said Resolution and with the aim of accelerating the granting process of Argentine patent applications, the ARPTO will consider that the patentability requirements (novelty, inventive step and industrial applicability) have been fulfilled if the application claimed as priority in the Argentinean application has been granted by a Patent Office having similar examination standards to those of the ARPTO. When no priority has been invoked in Argentina, this also applies when a homologue patent (i.e. with the same subject matter as the Argentinean application) has been granted.

Accordingly, only Argentine prior art would be searched during the examination process and the patent application would be in a position to be granted with the proviso that

• the substantive examination of the application has not yet started;
• the scope of the claims of the Argentine application is equal or narrower than the scope of the claims of the foreign granted patent;
• there are no national antecedents affecting the novelty;
• the claimed subject matter is not excluded from patentability;
• the oppositions lodged by third parties against the patent application are evaluated by the Examiner; and
• the relevant fee is paid.

In order to benefit from this resolution, applicants may be invited by the Examiner before the substantive examination takes place or, alternatively, request the application of the resolution by voluntarily amending the set of claims of their application according to the foreign granted patent. In the latter case, the applicant should file the adjusted claims together with a copy of the claims of the granted patent, with its corresponding translation into Spanish.

Furthermore, when voluntarily amending the pending claims (i.e. adapting them to those of the granted counterpart patent), the Resolution establishes a sixty (60) days period for the PTO to analyze whether to accept the applicant’s request.

Unlike previous resolutions directed to the same end (i.e. patent fast-track), since the voluntary request to apply for this resolution must be resolved within sixty (60) days, this would be an exception to the rule of examination order wherein patent applications are examined in the order in which they were filed. In other words, if the PTO accepts the voluntary amendment of the corresponding patent application, its examination would be prioritized over other applications in the examination process which were filed before the amended patent application at hand.

Whether by invitation of the Examiner or by a voluntary amendment, it should be noted that the claims must be adjusted to comply with ARPTO’s general requirements, e.g., only one independent claim is allowed, etc.

A very important aspect regarding the voluntary request of this Resolution is that the ARPTO can choose not to accept it. This is stated in the Resolution, particularly in Article 7 which indicates: “The National Patent Administration shall be released from the obligation to apply this resolution on legal and technical grounds…”, which is another way of saying that the Office can discretionally decide whether to accept or reject the request of the application of the resolution.

Resolution No. 112/19 – Prioritized Patent Examination Program (“PEP”) 

By means of this Resolution, the National Patent Administration created the Prioritized Patent Examination Program (“PEP”), in force as of June 07, 2019.

Said program is applicable to patent applications that comply with the following conditions:

a) Must have been first filed in Argentina;

b) Must have been published in the Official Patent Gazette;

c) The period for third parties to file objections must have elapsed;

d) Substantive Examination fees must have been paid;

e) The Substantive Examination cannot have been performed; and

f) No other similar fast-track examination request for the same application exists.

In order to qualify for this program, the applicant must submit the corresponding form together with the following:

a) National and international search report issued by the Direction of Technological Information and Documentation of the National Institute of Industrial Property (INPI);

b) An affidavit of not having filed the invention object of the PEP program with another Patent Office before;

c) In the case the applicant is a SME (small or medium-sized enterprise), certification thereof; and

d) The payment of the fee to be established for this program.

Having complied with the requirements set forth in the Resolution, the Patent Office will decide about whether the prioritized examination request is admissible within sixty (60) days counted from the request.

This program will extend for a term of three (3) years, from the enforcement of the resolution, extendable for equal periods.

7. FAQ

Can a PCT application be filed in Argentina?
Argentina is not a member of the PCT. Consequently, the patent application has to be filed within one (1) year from the original application (if Convention priority is invoked) or prior to the publication (if priority is not requested). If the original PCT application has already been published, the novelty will be affected, and the invention will be considered to be in the public domain in our country.

Can the patenting process in Argentina be accelerated?
If the application claimed as priority in the Argentinean application was granted by a Patent Office having similar examination standards to those of the ARPTO, the patenting process can be accelerated by means of the Patent Fast-Track. In the case of patent applications that were first filed in Argentina, the patenting process can be accelerated by means of the Prioritized Patent Examination Program (“PEP”).

Can the patenting process in Argentina be delayed?
The patenting process can be delayed in a number ways. Not complying with some formalities (for example, not filing a required document or filing a required document without the proper legalization) will result in the PTO issuing an Office Action. Additionally, Office Actions can be responded to using up to three extensions of time. On the other hand, an administrative term (for example, the term corresponding to responding an O.A.) can be stopped for one (1) month upon the payment of the corresponding official fees.

Are plant patents allowed in Argentina?
No. However, Argentina is a party to the International Convention for the Protection of New Varieties of Plants (“UPOV”), which provides a method of protecting the ownership of phytogenetic creations. Please click here for a more detailed explanation about this matter.

If the one-year term to invoke priority lapsed, is it possible to protect the invention?
Yes, provided that the patent application in Argentina is filed prior to the publication of the priority application or any other homologue application.

If the period for invoking priority lapsed and the priority application or any other homologue application has already been published, is it possible to protect the invention?
No. However, in the case that the client has continued to develop the invention and there is a new patentable subject matter in view of the application already submitted abroad, it is possible to protect such new developments.

If the invention has been disclosed, can it be protected by a patent?
A priori, it is not possible. However, what was exactly disclosed would have to be evaluated and determined given that, if the disclosure failed to mention or show the essential characteristics of the invention, then the invention could be protected. An example of this is the case in which a photograph of a new machine is published. If the mechanism for which protection is sought was not shown, then it could be protected by a patent.

Is it possible to file an additional application based on a pending application?
Yes. However, it will not be examined until the parent application is granted.

If a patent application is rejected, is it possible to file a divisional application?
If an appeal to the rejection is filed, then the application would be considered to be pending until the final ruling of the Patent Office. Only in that case, a divisional application based on a rejected parent application could be submitted.

When are the working requirements fulfilled in case of a patent claiming a manufacturing process? Should the claimed process be conducted Argentina or would it be sufficient if the directly obtained product (produced elsewhere) were imported into Argentina?
Patent law does not state what is meant by exploitation of a process and there is no jurisprudence on this issue. However, Article 8 of Law 24.481 (T.O. 1996) states that: “When the subject matter of the patent is a process, the owner shall have the right to prevent third parties not having his/her consent from the act of using the process and the acts of: using, offering for sale, sale, or import for these purposes the product obtained directly by that process.” Based on this, we interpret that the importation of a product manufactured abroad using the patented process is a way of exploiting the patent.

If an application invoking priority includes subject matter that is not disclosed in the priority application, which is the effective date considered for analyzing novelty?
The novelty of the subject matter disclosed in the priority application will be analyzed considering the prior art before the date of the priority application, whereas the novelty of the remaining subject matter not disclosed in the priority application will be analyzed considering the filing date of the Argentinean application.

Are provisional patent applications available in Argentina?
No. Additionally, the scope of the originally filed specification in Argentina cannot be broadened once the application has been filed. In other words, no additional subject matter can be added to that of the originally filed in the application.