On June 26, 2013 the National Patent Administration of the Argentine Patent Office (National Institute of Industrial Property, or INPI after its Spanish acronym) issued Regulation No. 73/2013 amending the Guidelines for Examination, which was pub-lished in the Official Gazette on July 15, 2013. Notwithstanding its title, the regula-tion did not actually amend the extant 2003 Guidelines, but only consolidated them in a new text and ordered that this new consolidated text be published on the Web page of the Argentine PTO.
The first Guidelines for Examination were issued in 2003, largely inspired in the Guidelines of the European Patent Office. The official practice evolved in the decade since 2003, but the main amendments were introduced by two regulations in 2012: one, issued in May, set forth new guidelines for examining chemical-pharmaceutical patent applications (the Joint Regulation), and another, issued in December, amended the guidelines for carrying out the examination of applications related to computer programs (Regulation No. P-318). A relatively significant change was also made to the procedure for filing divisional applications by Regulations Nos. D-147 and D-198 issued in 2010.
Somewhat remarkably, the consolidated text published in the PTO’s official site only underscores what was added to the 2003 Guidelines, but not what was deleted from them. However, it is the deletions that show the spirit and purpose behind this decade-long evolution, from a relatively liberal approach in 2003 to a much more restrictive one today. Thus, by not underscoring the deletions the consolidated text veils its most significant changes.
II. REQUIREMENTS FOR PATENTABILITY
The consolidated text keeps the classic patentability requirements of novelty, in-ventive step and industrial applicability.
No changes are made to the novelty requirement but, consistent with the elimination of selection inventions in the Joint Resolution of 2012, in the novelty assessment the consolidated text has deleted the reference that “a generic disclosure of the state of the art normally does not affect the novelty of a specific example of the invention falling within the terms of that disclosure”.
As regards inventive step, the problem-and-solution approach is deleted as the method to assess the existence of this condition. No alternative system is intro-duced in its place.
Finally, the consolidated text sets forth a more elaborate version of the requirement of industrial applicability: “to consider that an invention meets the requirement of industrial applicability it must necessarily: i) exhibit a technical character; ii) yield a technical or technological effect as otherwise it would have no relation to industry; iii) be reproducible; iv) the invention can be reproduced with the same characteris-tics and effects as many times as necessary; v) it must be capable of being materi-alized in a concrete object or process; vi) it must be capable of being manufactured; and vii) it must have a materially concrete application”. This definition was largely taken from a 2003 WIPO paper.
III. PATENTABLE SUBJECT MATTER
The consolidated text has deleted from the original 2003 Guidelines all references to uses and applications, which the Argentine PTO has increasingly been refusing over the past ten years. This comprises the new use of a known compound, as well as the new treatment of products or substances with known compounds, where the novelty lies in the new result achieved.
Second medical uses were already barred from patentability in the 2003 Guidelines, and largely on the basis of this prohibition the Argentine PTO also rejected Swiss-type claims. The consolidated text has also deleted references to second non medi-cal uses.
The various deletions from the 2003 Guidelines suggest that the Argentine PTO will request a detailed specification, and the claims will have to be limited to what has been described (in fact, this is precisely what it is already doing).
Moreover, the consolidated text sets forth the requirement introduced by the Joint Regulation (included in Annex IV, section [xiv]) that the methods and processes described in the specification must be directly applicable to the production processes and must state the best known method to carry out and put into practice the invention. This appears to (deliberately?) mistake the classic industrial applicability requirement for a novel condition of industrial scale.
The current version allows two or more independent claims in the same category, as in the 2003 Guidelines, but now only as an exception. The characterizing clause (“characterized in that”) is kept, but it is not clear whether the expression “com-prising” or the like will henceforth be accepted, as it is rejected in one part of the consolidated text and allowed in another.
The consolidated text allows the use of the term system “insofar as it can be likened to an assembly”, but not “when it does not clearly arise whether it is a physical entity or a method, or a mixture of both”.
Although some parts of the consolidated text appear to authorize functional features in the claims, the current text deleted the passage in the 2003 Guidelines whereby “a claim may broadly define a feature in terms of its function, even when only one example of the feature has been provided in the specification, if a skilled reader would appreciate that other means could be used for the same function”, and kept the principle that “as a general rule, claims which attempt to define the invention, or a certain feature, by a result to be achieved should not be allowed”. In consequence it is to be expected that functional claims, as heretofore, will not be accepted by the Argentine PTO.
The consolidated text also seems to suggest that the Argentine PTO will require that the claims be more specific and fully supported by the specification, as it has deleted from the 2003 Guidelines the passage according to which “most claims are generalizations from one or more particular examples”.
The consolidated text retains the two-step examination process (preliminary and substantive). In turn, the substantive examination keeps the three usual reports (request for explanations prior to the substantive examination, substantive report proper, and report prior to the final decision).
B) Third-party presentations
The consolidated text makes many changes in this regard as it allows third-party observations even if they are filed after the 60-day post-publication legal term or without paying the requisite fee. These presentations or “warnings” will exist side-by-side with the classic observations (filed within said term and with the requisite fee). All these filings –“third-party observations” and “warnings”– must be incorporated into the official file wrapper, but only the assessment of the former is mandatory.
VII. FORMAL ISSUES
Translations of documents in a foreign language (applications, priority documents, assignment of priority rights) must be carried out by a registered translator; if the translator is registered outside the city of Buenos Aires, his or her signature must be legalized by the association the translator is affiliated with. An extra working copy for the PTO is also required.
Consistent with these requirements, the consolidated text no longer allows to file a declaration stating that the application filed in Argentina is a complete translation of the foreign application whose priority is claimed. The translation must be submitted in digital form (CD-ROM).
B) Proof of priority rights
The existence of a priority document can be proved submitting an official copy of a document filed in another application as long as this copy has been issued by the Argentine PTO, but not, as heretofore, by filing a plain copy thereof or stating that the original document has been filed in another application (except for divisional applications).
VIII. DIVISIONAL APPLICATIONS
In accordance with the system introduced by Regulations Nos. D-147/2010 (issued June 30, 2010) and D-198/2010 (issued November 26, 2010), only divisionals of pending applications (i.e., those which have not been granted, withdrawn or re-jected) are allowed, and where successive divisional applications have been filed, all of them must be pending. If the original divided application has been assigned, only the assignee may apply for the divisional patent.
IX. UTILITY MODELS
The consolidated text incorporates new annex V on utility models with the following provisions:
- novelty is predicated on the shape applied to a practical object, not on the object itself;
- this object may consist of conformations, devices, mechanisms, structures, apparatuses and instruments, but not processes, chemical compounds, compositions, electrical connection schemes, buildings, bridges, floodgates, dams, or industrial plants (other than the elements used to build them);
- novelty is destroyed by disclosures made abroad which can be accessed in Argentina via the internet (under the law, the fact that inventions protected by utility models “were known or disclosed abroad” does not affect their novelty).
The consolidated text has a number of detailed provisions on formal issues which concern the assignment of rights in patents and utility models. These are the main provisions:
- in onerous assignments the price must be set forth, and generic formula-tions will not be allowed; it no price is stated, it will be assumed that the assignment was made for free;
- assignment documents in a foreign language will have to be translated in toto; the partial translation limited to the parts concerning the assignment will no longer be accepted;
- where a patent or utility model application has been assigned, subsequent prosecution will be carried out by the attorney who recorded the assign-ment, regardless of any statement made by that attorney to the effect that his or her intervention was exclusively limited to the assignment.
In essence, the consolidated text of Regulation No. 73/2013 compiles and coordi-nates the various regulations issued and the actual practice followed by the Argen-tine PTO over the past ten years, in order to avoid inconsistencies resulting from the successive regulations and in order to set forth the official criteria on what is and is not patentable.
These criteria convey a more restrictive approach towards patentability, ruling out uses and limiting the scope of patents to a “photographic” protection. This arises not so much from what has been added to the original 2003 Guidelines, but rather from what has been deleted from them.
It must be kept in mind that the consolidated text does not determine what is or is not patentable, but rather what the Argentine PTO deems to be patentable or not patentable. This, however, is not a minor issue, inasmuch as any disagreement with the PTO’s criteria will have to be settled by means of an appeal to the courts.