In a decision issued on March 5, 2013 in the case “E.I. Du Pont de Nemours and Company v. Instituto Nacional de la Propiedad Industrial [National Institute of Industrial Property]”, Division 2 of the National Court of Appeals on Federal Civil and Commercial Matters of the city of Buenos Aires reversed, on the grounds of excessive formalism, the Argentine PTO’s decision that had declared that applicant and plaintiff E.I. Du Pont de Nemours and Company had forfeited its priority claim for having failed to timely submit a certified copy of the U.S. application. The Court of Appeals thus affirmed the district court’s decision that had ruled invalid the PTO’s decision and had ordered that the priority claim be reinstated and prosecution of the application be continued.
Du Pont had claimed the priority of three U.S. applications but had failed to submit the third priority document within the legal 90-day term as of the patent application date. The reason had been that the USPTO had not issued this document in time. Notwithstanding the fact that Du Pont, within that term, had applied for an extension and explained the reasons for said request, the Argentine PTO declared that the priority claim had been forfeited. The grounds for the official decision were that applicant’s support for its request (a photocopy of a letter issued by the USPTO) was not signed and made no reference to the certified copy involved.
The Court of Appeals based its decision on three arguments. First, applicant’s failure to timely submit the priority document had been caused by circumstances beyond its control and, furthermore, the applicant had not acted slackly; however, the Court did not state that this had been a case of force majeure, as required by section 19 of the Argentine Patent Law. Furthermore, although the letter issued by the USPTO was neither signed nor legalized, it had been issued by its electronic system and could be linked, through the applicant’s reference number, to the corresponding U.S. application.
The Court of Appeals also took into account that the omission had been remedied before the examiner took up the case, and said omission had caused no harm. The Court finally argued that the requirement involved was absolutely reparable.
This decision is in line with an earlier ruling from the same court issued in May 2012 (“Frito Lay North America v. Instituto Nacional de la Propiedad Industrial [National Institute of Industrial Property]”), where it also revoked, on the grounds of excessive formalism, the Argentine PTO’s decision to reject a patent application because the applicant had failed to submit a verified translation of the specification and claims. Thus these decisions allow applicants greater flexibility to meet the formal requirements of the Argentine administrative procedure.