Currently, there is a point of view on investment in China: the market in Latin America will get high attention in the world. Among 34 countries and territories of Latin America, Argentina (AR), Brazil (BR), Mexico (MX) are particularly concerned by many foreign companies. Accordingly, the patent protection in Latin America, which is a useful strategy for competition, will play a good role with the increase of focus of foreign companies on the Latin American market. In this regard, the author intends to conduct a preliminary probe on the patent systems for these three countries in Latin America, in order to provide some information for patent applicants to understand the patent systems of Latin America.
1. Introduction of Argentina (AR)
Argentina is a Contracting Party of the Paris Convention. However, it is currently not a Contracting State of the PCT. The patent system of Argentina provides protections for inventions, utility models and designs. Specifically, applicants can obtain patent protection for inventions and utility models based on Law No. 24,481 and Decree 260/96, and obtain patent protection for designs according to Law No. 16,478 and Decree 6673/63.
In Argentina, patent for invention may have a protection term of 20 years, counted from the filing date of the application. A patent application for invention shall experience a substantive examination to verify whether a patent shall be granted. After the patent application for invention is published, the Argentine Patent Office (INPI-AR) may accept third-party observations within 60 days of the publication. When an inventor or his successors have disclosed an invention by any means of communication or have exhibited at a national or international exposure within 1 year prior to the filing date of a patent application for the invention, the disclosure of the invention does not affect the novelty of the patent application. Patent for utility model may have a protection term of 10 years. The duration of protection for design shall be 5 years from the date of registration and may be extended for two consecutive periods of the same duration at the request of the owner. That is, the design may have a maximum protection of 15 years. A single registration for design may include up to 50 examples of realization of a single design, provided that they are all homogenous.
It should be noted that the Argentine Patent Office issued Regulation No. 318 on December 7, 2012, which introduced a new provision on the protection of patents related to computer programs. The new provision may correspond to that stipulated in the Guidelines issued by EPO. Specifically, a computer program per se, or a computer program stored in a computer readable media is not patentable. When the computer program is carried out by a known computer, it is not patentable, as well. However, if a technical scheme has technical characters and makes a technical contribution to the state of the art, patentability must not be denied simply because a computer program is involved. For example, the following schemes relating to computer programs may be considered as having technical characters: processing of physical parameter data handled or transmitted by a computer; method or process that may enhance the technical operation of a computer system; method or process that may enhance the connection between computers.
2. Introduction of Brazil (BR)
Brazil is a Contracting Party of the Paris Convention, and also a Contracting State of the PCT. In Brazil, Law No. 9,279, of May 14, 1996 regulates rights and obligations regarding industrial property, including the granting of invention and utility model patents, and the granting of a registration of an industrial design. An invention patent shall remain in force for a period of 20 years, and a utility model patent for a period of 15 years from the date of filing. Additionally, the protection term shall not be less than 10 years for an invention patent and 7 years for a utility model patent, beginning on the date of granting. The registration of industrial design shall remain in force for a period of 10 years from the date of filing, being extendable for 3 successive periods of 5 years each. That is, the Brazilian Patent Office (INPI-BR) may provide a total of 25 years’ protection for industrial design, which is more adequate and flexible than that provided by the Chinese Patent Office (SIPO).
Although Brazil is the fourth country in the world that has established the patent system, the examination capacity of Brazil is relatively weak comparing with IP5 countries, and the prosecution of patent applications may last long in Brazil. In practice, most Brazilian patent applications handled by the author have a long examination procedure. For example, a patent application entering the Brazilian national stage in 2002 via the PCT route did not get the first Office Action until 2013, which took 11 years to step into examination. Also to be noted is that the Brazilian Patent Office does not mail office actions directly to applicants, but publish them on the Brazilian Industrial Property Journal. The applicants or their agents should monitor the Brazilian Industrial Property Journal to timely get the office actions.
Taking into account the condition for patent examination in Brazil, the applicants having interests on the Brazilian market may want to know how to accelerate the examination process in Brazil. Regarding this issue, the Brazilian Patent Office prescribes that if any of the following situations (1) – (3) exist, the applicants’ request to speed up the examination can be considered. The situations may include: (1) the applicant is 60 years old or older; (2) the object of the patent application is being reproduced by third parties without the applicant’s authorization; or (3) the grant of a patent is a condition for obtaining financial resources from official national credit institutions, or from mutual investment funds, for exploitation of the product or process. It should be emphasized that, for situation (3), it is eligible to expedite the examination only when the grant of the patent is the prerequisite to obtaining funding from a Brazilian official credit institution. If it is to apply for funding from a Chinese official agency, situation (3) may not be satisfied. Therefore, for foreign applicants, it may be difficult to fast-track patent examination in Brazil.
3. Introduction of Mexico (MX)
Mexico is a Contracting Party of the Paris Convention, and also a Contracting State of the PCT. The Industrial Property Law of Mexico published on June 27, 1991 prescribes that: the patent for invention shall have a non-renewable term of 20 years, the registration of utility models shall have a non-renewable term of 10 years, and the registration of industrial designs shall have a non-renewable term of 15 years, counted from the filing date of the application.
Applicants may convert a patent application for invention into a utility model or industrial design and vice versa, and proceed with the conversion of the application within three months from the filing date or within three months of the date on which the Mexican Patent Office (IMPI) requests to make the conversion. It should be noted that this kind of conversion is not permitted by the SIPO after a patent application is submitted.
With regard to invalidation proceedings in Mexico, in addition to conventional grounds for invalidation, the patent or registration shall be invalid in the cases when abandonment of the application occurs during the course of processing, or when the grant has been invalidated by serious error or negligence, or when the grant has been made to a person not entitled to it, within 5 years from the date on which the publication of the patent or registration in the Gazette becomes effective. Such grounds are not listed in the provisions concerning invalidation in China. In China, apart from the invalidation ground regarding confidentiality examination, the SIPO only provides invalidation grounds focusing on contents of the application (such as the description or the claims), without considering patent right ownership or other procedural flaws that may exist during examination.
Regarding the use of the PPH program, the Mexican Patent Office is at the forefront among the patent offices in Latin America. Up till now, the Mexican Patent Office has signed PPH agreements with the Chinese Patent Office (SIPO), the Canadian Patent Office (CIPO), the Spanish Patent Office (OEPM), the United States Patent Office (USPTO), the Japanese Patent Office (JPO), the Korean Patent Office (KIPO), and the Singapore Patent Office (IPOS). Accordingly, Chinese applicants can speed up the examination of an MX application according to a corresponding CN patent.
In Mexico, computer programs per se and business methods do not belong to eligible objects for patent protection. However, if the technical schemes relating to computer programs, business methods, and e-commerce have actual technical effects, applicants can submit appropriate patent applications for protection. It should be noted that, on the protection of computer implemented inventions, the criteria used by the MX Examiners to evaluate the patentability of an invention rarely coincides with the criteria used by the USPTO. When using the PPH program to expedite the examination of an MX application based on a corresponding US patent, amending the claims of the MX application according to the US patent may not necessarily result in the allowance of the MX application.
Comparing with IP5 countries (including: China, Europe, America, Japan, Korea), the Latin American countries may have their own characteristics for patent protection. Also, the official languages of the Latin American countries may not be such commonly used. For example, Chinese applicants may not be so familiar with the Spanish used in Argentina and Mexico and the Portuguese used in Brazil. The inconvenience caused by the languages may bring some obstacles to the applicants for understanding the patent systems of the Latin American countries. In view of the above, when planning to apply for patent applications in Latin America, it is better for the applicants to seek help from agents of their countries having experiences on patent prosecution in Latin America, or turn to Latin American agents for help, in order to effectively file a patent application and get valuable patent protection in Latin America.