On January 10, 2018 the Argentine government issued Emergency Decree No. 27/2018 (henceforth the decree) which includes –among a myriad of chapters ranging from port authorities to public works bids and from works of art to the legal metric system– a number of provisions on trademarks, patents and designs. While these provisions are mainly directed to procedural issues, some of the changes introduced by the decree are quite drastic, and some also affect the substance of the IP rights involved. Here follows a summary of the main modifications affecting patents and utility models. This report is particularly brief because, at the time of writing this article, several provisions still need to be implemented by more specific regulations.
The main changes concerning patents affect the terms for filing various documents or making petitions, which are reduced considerably. Among these, the term for requesting substantive examination is reduced from three years to 18 months from the filing date (new art. 27 of the Patent Law). Regarding specifically this shortened term, on January 16, 2018 the Argentine PTO issued Regulation No. P-001/2018 providing that for running terms set forth in months or years the one expiring first shall apply, with the proviso that the new shorter terms shall begin to run on January 12, 2018.
Another significant change is that it will no longer be necessary to file the priority document and its verified translation within 90 days from the filing date: under the new provisions, these documents may be requested by the PTO during substantive examination of the application (new section 14, first paragraph, of the Patent Law). Similarly, it will be necessary to submit the Power of Attorney only if the PTO requests it (new section 68, first paragraph, of the Patent Law).
The decree makes no provision for the assignment of priority rights, which in all logic should follow the same rules as the priority document; since, however, the decree is silent on this point but unequivocally states that the assignment must be filed (new section 14, second paragraph, of the Patent Law), until new regulations are issued the safest course of action is to keep the old practice of filing it within 90 days from the application date.
Utility models, introduced in 1995, failed dismally in Argentina because it took almost as much time to obtain a grant as did with patents. Since the term of utility models was 10 years from the filing date, against 20 years for patents, there was no incentive to apply for utility models, which for many years hovered around only 200 applications per year.
The decree significantly shortened the procedure, providing that the utility model applications shall be examined before publication, and not after, as heretofore (new section 57 of the Patent Law). Accordingly, substantive examination should start immediately, and not 20 months after the filing date, i.e. after publication and the term allowed for third-parties to file oppositions against the application.
Another significant change concerns the novelty requirement, as originally only domestic novelty was required, while henceforth absolute novelty will be needed for an invention to qualify as a utility model (new section 55 of the Patent Law). This too is a welcome change, as the old rule would validate straight copies of minor inventions made abroad.
As mentioned above, the decree we have been discussing here is an emergency decree (its literal translation is a “decree of necessity and urgency”), a special order introduced by a constitutional amendment in 1994 (art. 99). This order is issued by the President, must then be submitted to Congress following a specific procedure, and has the force of a regular law unless and until it is repealed by both Houses of Congress; and even if repealed, this repeal has no retroactive effects, since all rights acquired while the decree was in force are kept (art. 24, Law No. 26,122). At the time of writing the Argentine government is seeking congressional approval and drafting the regulations needed to implement the various changes introduced by decree No. 27/2018.
The changes brought about by the decree appear to be good for utility models. Regarding patents, the changes are not substantial, and it is a pity that the examination process was not shortened as was done for utility models; a repeal of the 2012 Joint Resolution on chemical and pharmaceutical inventions would have been too political for any realistic expectation to have it passed.