Regulation of the New Administrative Trademarks Opposition Procedure – Resolution INPI P-183/2018.

On July 19, 2018, Resolution INPI P-183/2018 was published in the Official Gazette of the Republic of Argentina, describing the new procedure for the resolution of trademark oppositions, effective from September 17, 2018.

The main change resides on a reduction of the term allowed to reach an amicable resolution of an opposition to three (3) months, and that if no agreement is reached between the parties, the INPI shall resolve on the issue.

Annex I of the mentioned Resolution describes the steps to follow as well as the relevant deadlines, namely:

At the expiration of three (3) months from the official notice of an opposition, if applicant does not succeed in its withdrawal by the opponent, the Trademarks Office shall notify this latter so that within fifteen (15) business days it maintains the opposition by paying the relevant fee (Annex II) and extend on the grounds offering the evidence deemed relevant.

Non-payment of the mentioned fee shall be deemed as a lack of interest from the opponent to keep the opposition in force and therefore shall be taken as a simple “call of attention”.

Within fifteen (15) business days from the expiration of the previous term, the Trademarks office shall notify the applicant of any opposition which remains outstanding so that within fifteen (15) business days as form said notice it answers offering the evidence deemed relevant.

After the submission of evidence or the expiration of the term therefor, the Trademarks office shall notify the parties so that within ten (10) business days they file the final arguments.

If within said term the parties inform that they have initiated a mediation or settlement procedure, or any other method of dispute resolution through a joint submission, the mentioned 10 business-day term shall be automatically interrupted for a non-extendable term of 30 business day from the joint submission. Within this last term, the parties must conclude the procedure chosen to resolve the opposition.

At the expiration of the 30 business-day term, a new 10 business-day term shall begin with the same scope of the 10 business-day term previously interrupted, so that the parties inform the Trademarks Office of the result obtained, submitting evidence therefor.

If the conflict is not resolved through the procedure chosen by the parties, the Trademarks Office shall resolve if the opposition in question is grounded or ungrounded.

Against this final resolution, an appeal may be filed within thirty (30) business days from its notice, through the payment of the relevant fee (Annex II). Said appeal must be filed at the National Institute of Industrial Property (INPI), which within ten (10) business days shall forward it to the Court of Appeals on Civil and Commercial matters of the City of Buenos Aires, so that it solves the dispute.

Upon resolution of the opposition, the Trademarks Office shall decide on whether to allow or reject the registration of the intended trademark.

In turn, Annex II provides for the official fees applicable to the new procedure.

Main amendments to the Trademarks, Patents and Industrial Models/Designs Laws pursuant to Decree 27/2018

On January 11, 2018, Decree No. 27 introduced several amendments to the procedures for Trademarks, Patents, Utility Models, Industrial Designs & Models in Argentina, for de-bureaucratization and simplification purposes.

Some amendments became applicable immediately upon publication of the Decree, and others remain to be regulated.

Below is a summary of the most significant modifications:

Trademarks

Reduction to 3-months of the term to reach amicable resolution in oppositions. If no agreement is reached, the INPI will solve the dispute, under a procedure set by the Law Enforcement Authority; its resolutions will only be subject to direct appeal within 30 business days from its notification.

In the lawsuits for opposition to trademark registration currently pending, the INPI may verify their status at court and render a resolution accordingly.

The resolution denying the registration of a trademark for reasons other than withdrawal of oppositions may be challenged at the National Courts on Civil and Commercial matters.

The records of pending or registered trademarks are publicly and unrestrictedly accessible.

The INPI, acting on its own initiative or upon request of a party, will resolve at administrative level the nullities of registered trademarks in contravention of the provisions of the law and its Resolutions may be appealed.

On the fifth anniversary of the trademark’s registration, the trademark owner must submit an affidavit regarding the use of the trademark that far.

Patents

The electronic means for filing patent applications will be enabled.

It is no longer be necessary to submit the priority document (and its translation) or assignment from inventors upon filing the application. However, such documents may be requested by the INPI when conducting the substantive examination, upon discretion of the examiner.

To recognize the priority, the following requirements must be met:
I) That the scope of the application filed in Argentina is not greater than the scope claimed in the foreign application; otherwise, the priority must be only partial and referred to the foreign application.
II) That there is reciprocity with the country of the priority application.
III) The deadline to meet the formal requirements of an application will be 30 days.

An application for a patent for invention can be converted into an application for utility model and vice versa, within THIRTY (30) calendar days as from the filing date of the application or from the date required by the INPI.

The deadline to answering to the preliminary technical and administrative examination report is 30 calendar days.

The deadline to request the substantial examination and pay the relevant fees is 18 months for new patent applications, while for pending applications the deadline is the first to occur of: (a) 18 months since the entry into force of Decree 27/2018 (i.e. July 12, 2019), or (b) the 3-year deadline applicable before the Decree 27/2018.

The requirement to submit and record the Power of Attorney is eliminated, although its submission may be requested by the Examiners.

Utility Models

The term for third-parties to file observations against a UM application is 30 calendar days as from the publication.

The deadline to request the substantial examination is 3 months from the filing date for new UM applications, while for pending applications the deadline is the first to our of: (a) 3 months since the entry into force of Decree 27/2018 (i.e. April 12, 2018), or (b) the 3-year deadline applicable before the Decree 27/2018.

Industrial Models and Designs

The built-in form and/or the appearance is considered an industrial model or design applied to an industrial or handcrafted product that gives it ornamental character.

No protection will be granted to industrial models or designs that have been published or publicly exploited, in the country or abroad, prior to the date of registration, except for those disclosed within the SIX (6) months prior to the filing date or priority when they meet the following conditions:
1.-That such disclosure would have resulted directly or indirectly from acts made by the author or his legitimate successors;
2.- That the disclosure comes from a third party due to an act of bad faith, breach of contract or other unlawful act committed against the author or legitimate successor.
3.- That the application was wrongly or unduly published by the INPI.

One same application for registration may include up to TWENTY (20) models or industrial designs only when all of them are applied or incorporated into products that belong to the same class of the International Classification.

The application for renewal of the registration must be submitted within the last SIX (6) months prior to its expiration, and probably within a 6-month grace period.

Resolution 283/2015 from the Patents Office amends Patent Guidelines

The Argentine Patents Office of Argentina (I.N.P.I) has recently passed Resolution No. 283/2015, which amends the “Patent Guidelines” in relation to amino acid sequences, genetically modified organelle claims and claims of transformation events.

The resolution entails a more restrictive interpretation and application regarding the prohibition of patentability of every living matter preexisting in nature set forth in section 6 of the Argentine Patents Law. The Guidelines provide that plants, animals and essentially biological procedures for reproduction or production (obtention) thereof shall not be deemed inventions. Specifically, it excludes plants, parts and components thereof that may lead to a full individual whether or not modified and the essentially biological procedures for reproduction or production (obtention) of plants. The justification of such restriction lies on preventing the monopoly of the natural reproduction procedures or non-technical procedures.

The Guidelines define that, for the purposes of the Argentine Patents Law, by essentially biological processes it is meant the series of phases ending in the obtention or reproduction of plants fulfilled mainly or significantly by action of the phenomena proper or existing in nature. Therefore, in order to determine whether a procedure for the production or reproduction of plants and animals is essentially biological, the technical aspect of the process is relevant: if the technical involvement of the human being plays a significant role in the determination of the result or if its influence is decisive, then the process shall be deemed to have a technical nature and shall therefore be patentable.

Resolution 283/2015 in question specifies that by parts and components of plants it is meant, merely as an example, the sprouts, seeds, stems, cells, fruits, bulbs, tubers, buds, pegs, flowers, etc.; as well as its cell components such as organelles, membranes, DNA molecules, etc.

The Resolution further includes a new requirement for claims with modified parts and components: these must specify their isolated status, and that they are capable of leading to a complete organism, to avoid falling in the prohibition of patentability indirectly. Moreover, the Resolution amends item 2.1.7.9 and provides that claims of plants or animals shall not be allowed even when obtained through a biotechnological procedure; the previous wording only makes reference to microbiological procedures. To avoid the disparity of interpretations, the item concludes providing that the prohibition to patentability is maintained “even though the technical involvement of man is significant”.

As a result of the above, only the patentability of biotechnological procedures shall be possible (i.e., not those essentially biological) for the obtention of transgenic plants and animals, provided they meet the patentability requirements.

In addition, the prohibition of claims of products referred to plants and animals set forth in section 6 of the Patents Law shall be independent of its form of production.

By way of example, an application claiming a genetically modified animal expressing a certain gene and susceptible to a disease used as lab sample, would be dismissed. Likewise, it shall not be deemed an invention under the Argentine Patents Law an invention consisting on a “Non-human bitransgenic mammal that produces humanized milk, milk, vectors and methods…”, as described in patent application AR087557.

This invention, created by Argentine scientists, financed with State funds and resulting from an interdisciplinary work that took many years, would not be patentable in the same country where it originated.

INCORPORATION OF DR. GUSTAVO SCHÖTZ TO OUR FIRM

We are glad to inform about the incorporation of Mr. Gustavo Schötz, to our firm. JD and PhD. Founder of the Intellectual Property Center of Austral University and first Director from 2004 to 2014. Chaired the IP Master Program between 2008 and 2014. Consultant of the WIPO and of the Ministry of Science, Technology and Productive Innovation. Chaired the Office of Technology Transfer of Austral University.
Member of the INTA, LES, ASIPI and AUTM.

Author of several publications on Intellectual Property, licenses, trademarks, consumer rights, international private law and innovation management.

Dr. Schötz will render advice and consultancy on the areas of:

* Legal analysis and advice in complex situations regarding international trade, intellectual property, contractual negotiation and drafting, consumer protection and business networks.

* Design and execution of business strategies based on innovation, patenting, new technologies and entrepreneurship.

* Liaison and relationship between private public participants in R+D+i programs, both at domestic and international level.

* Business structuring based on intangible assets: franchising, merchandising, entertainment and sports law, open innovation, among others.

* Intellectual property audits on advertising, image rights, mergers and acquisitions.

* Organization and management of technological intelligence and business intelligence teams. Freedom to operate reports.

* Intellectual Property contracts negotiation and drafting.

* Intellectual Property management, valuation and securitization.

* Protection, negotiation and marketing of intangible asset portfolios.