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:
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.
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.
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.