The Argentine government announced on March 1, 2015 that it will be sending a draft bill to Congress amending the design patent law.
The current law (decree-law No. 6673/63) was enacted in 1963 and became effective in 1965. Forty years before the community design, this law created a simple registration system without substantive examination which translated into a fast and relatively inexpensive process.
While keeping those features, the bill introduces amendments which improve the situation of the authors, broadens the scope of their rights, and simplify the registration procedure.
Regarding the substantive requirements, the bill provides that novelty shall not be affected by any disclosure within six months prior to the application date or its Convention priority, if it has directly or indirectly resulted from: acts by the author or its assignees; an act of bad faith or an illicit act by third parties; a breach of contract; a breach of trust; or an erroneous or wrongful publication by the Argentine PTO (new section 6, paragraph a], subparagraphs 1. and 2.). Under the current law non-prejudicial disclosure only comprises the display, by the author or with his authorization, in exhibitions or fairs, in Argentina or abroad, provided the application is filed in Argentina within six months from the date on which the exhibition or fair opened (section 6, paragraph a], decree-law No. 6673/63).
The draft bill also broadens, or rather lengthens, the rights of the patentee, as it provides a protection term of five successive five-year terms (new section 7), against the current three (section 7, decree-law No. 6673/63).
Other significant advances involve the registration process, as the draft bill improves the applicant’s situation and simplifies the procedure. Accordingly, the draft bill allows multiple applications as the application may include up to ten models or designs, provided they all belong to the same class of the Locarno Classification. Moreover, applications may be divided, and their multiple objects may be enforced, assigned, encumbered, renewed or canceled separately (new section 9). The current law requires that all embodiments in the application be homogeneous (section 9), a requirement that goes unexplained by the statute and often gives rise to official objections.
The draft bill also provides for the deferred publication of the registered model, up to a maximum term of six months from the registration date (new section 16). The current law has no such provision.
Renewal is also greatly facilitated by the draft bill, in that it provides that it is to be carried out within the last six months of the design’s lifetime (new section 11, first sentence), and not within 6 and 9 months prior to the expiration (section 11, decree-law No. 6673/63). It also grants a six-month grace term from the expiration date (new section 11, second sentence), which is not provided for in the current law.
Another significant change is that under the draft bill the statute of limitations is not applicable to the cancellation action seeking that the design patent be declared null and void (new section 18). This provision seeks to overcome the situation created by a 1992 decision from the Supreme Court which ruled that the cancellation action against a design patent expired after five years in spite of the fact that it was affected by an absolute nullity (Supreme Court, October 16, 1992, “D’Uva, Norberto Carlos v. Schirripa, Gaudencio et al). The practical consequence of this ruling was that anyone could copy and register a design, and the registration became unassailable after five years.
Finally, the draft bill sets forth fines as the criminal sanction for the violation of rights arising from design patents, which are calculated on the basis of the official fees charged by the Argentine PTO: a minimum fine of 50 filing fees for design patents, and a maximum fine of 330.
In sum, this is a sensible and simple draft bill, which takes into accounts the needs of the authors of new aesthetic shapes of industrial products.