Accelerated Examination of Patent Applications in Argentina

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:

  1. 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.
  2. 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;
  3. The subject matter being claimed must not constitute patent ineligible subject matter under Argentine patent law; and
  4. 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.

An Overview of the USTR’s 2016 Special 301 Report on the State of IPR in Argentina

In this post, the BRIC Wall Blog continues to examine the Office of the United States Trade Representative (USTR) 2016 Special 301 Report (Report) released on April 12, 2016.  Following extensive research and analysis, the Report placed eleven (11) countries on the priority watch list and twenty-three (23) on the watch list. Argentina remains on the Priority Watch List in 2016.

The Report indicates that a major challenge in Argentina is the lack of effective IPR enforcement by the national government. Argentine police do not take ex officio actions, prosecutions frequently stall, and cases may languish in excessive formalities. Furthermore, even if criminal investigations reach final judgment, sentences are not sufficient to deter future infringement.

Argentina also continues to struggle with rampant counterfeiting and piracy. The notorious La Salada market in Buenos Aires is one of the biggest open-air markets in Latin America offering counterfeit and pirated goods. The city of Buenos Aires attempted to combat increasing lawlessness in the market in 2014, but received little assistance from the national government and as such the efforts were unsuccessful. In addition, optical disc copyright piracy is widespread and internet piracy is a growing concern in the country. In several content areas internet piracy rates are approaching 100%. For example, the Argentine-run market Cuevana, which offers pirated movies and TV shows, expanded in 2015 to include a mobile streaming application. The Report also indicates a problem with widespread use of unlicensed software by both private enterprises and the Argentine government. In spite of these issues, criminal enforcement for online piracy is nearly nonexistent.

Argentina also faces a number of ongoing challenges to innovation in the agricultural, chemical, biotechnology, and pharmaceutical industries. Argentina fails to provide adequate protection against the unfair commercial use and unauthorized disclosure of undisclosed test data generated to obtain marketing approval for pharmaceutical or agricultural products. Furthermore, Argentina only provides patent protection from the date of grant of the patent and offers no provisional protection for pending patents. There is a substantial backlog of patent applications, which causes long delays in registering rights. In addition, Argentina requires that the process for the manufacture of active compounds must be reproducible and applicable on an industrial scale in order to be patentable. Resolution 283/2015, introduced in September 2015, limits the ability to patent biotechnological innovations based on living matter and natural substances, including biologics. These measures limit the ability of companies investing in Argentina to protect their IPR and appear inconsistent with international practice.

In spite of these issues, the report states that the United States is hopeful that the recently elected government of President Mauricio Macri will engage more productively to improve the protection and enforcement of IPR in Argentina, thereby creating a more attractive environment for investment and innovation.

 

Written by Lisa L. Mueller and Rikki A. Hullinger.