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 industrial designs. This report is brief because, at the time of writing this article, several provisions still need to be implemented by more specific regulations).
Earlier draft bill retrieved
Here the decree replicated practically in toto a draft bill of 2015 which had been submitted by the former government and failed to received approval from Congress. The main changes concern non-prejudicial disclosure, multiple and divisional applications, simpler formal requirements, easier rules for renewal, reinstatement of expired designs, and deferred publication. A provision set forth in the 2015 draft bill which regrettably was not picked up by the decree was an extension of the term from 15 years (three 5-year terms) to 25 years (five 5-year terms).
Under the decree non-prejudicial disclosure is expanded to encompass any disclosure by the author or the author’s legal successors, unlawful disclosure by a third party (bad faith, breach of confidentiality or another contractual obligation), and error in publication by the PTO, provided these events take place within six months prior to the filing date in Argentina or its Convention priority (new section 6, paragraph a], subparagraphs 1., 2. and 3., of the Designs Law).
Multiple applications and divisionals
Multiple design applications are allowed (up to twenty designs), provided they involve products in the same class of the Locarno Classification (new section 9, first paragraph, of the Designs Law). Here each design in a multiple registration is deemed independent from the others in the same registration for purposes of renewal, assignment and enforcement (new section 9, third paragraph, of the Designs Law). Divisional applications, heretofore not provided for in the statute and not accepted by the PTO practice, shall henceforth be allowed, keeping the filing date of the parent case and, where applicable, the priority claim (new section 9, second paragraph, of the Designs Law).
Formal requirements. Simplified procedure
Formal requirements have also been simplified. The description is no longer mandatory, and photographs and digital images shall be accepted (new section 10 of the Designs Law). Renewal is to be applied for within six months prior to the expiration (instead of the cumbersome system whereby renewal had to applied for within 6 to 9 months prior to expiration), and, moreover, a six-month grace term after the expiration is now allowed to reinstate the design (new section 11 of the Designs Law). Deferred publication for up to a maximum term of 6 months from the filing date, similarly not provided for in the old statute, shall henceforth be allowed (new section 16, second paragraph, of the Designs Law).
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 industrial designs, although inevitably much will depend on the fine tuning achieved by implementing regulations. It is to be regretted, however, that the decree did not replicate the extension of the term from 15 to 25 years.