On September 19, 2016, the Argentine Patent and Trademark Office (ARPTO) issued a resolution that will allow patent applicants the option to request accelerated examination of a patent application. This resolution will become effective on October 15, 2016.
The resolution applies to any patent applications for which examination has not yet started as of October 15, 2016. For those applications that qualify, the ARPTO is authorized to consider that the essential requirements of patentability have been satisfied in those circumstances where a patent has been granted outside of Argentina for the same invention (regardless of whether or not priority has been claimed). In addition, the following requirements must also be met:
- The foreign Patent Office which granted the corresponding patent being relied upon must (a) conduct substantive examination; and (b) have the same requirements for patentability as those of ARPTO.
- The scope of the patent claims filed in Argentina must be less than or equal to that of the corresponding foreign patent being relied upon;
- The subject matter being claimed must not constitute patent ineligible subject matter under Argentine patent law; and
- Any objections raised by third parties to the patent application must be considered.
At any time before the start of substantive examination, an applicant meeting the above requirements can file a voluntary request for accelerated examination. The Argentine Patent and Trademark Office will issue a decision within sixty (60) days of the filing of the request. In some circumstances, the ARPTO may require an applicant to amend the scope of its claims to be commensurate with those granted by a foreign patent office. If the ARPTO makes such a request, it will allow the applicant ninety (90) days from the day of notification to make the appropriate amendments. A request for accelerated examination may be denied by ARPTO for various reasons, including reasons of national defense, internal security,health emergency or for other public interest reasons.
This post was written by Lisa Mueller and Eugenio Hoss of Marval, O’Farrell & Mairal.