The Argentine National Patents Administration (I.N.P.I) has recently passed Resolution P-056 (effective as from October 15, 2016), whereby an applicant for a patent or utility model may – prior to the substantial examination report- voluntarily file a petition in order for the Patents Office to deem fulfilled –in relation to the application- (a) the patentability requirements of Section 4 of Law 24.481 and (b) the International search in relation to patent applications filed during the effectiveness of Law 24.481:
(i) when it is shown that the priority claimed in terms of Article 4 A 1 from the Paris Convention has been granted abroad by the office of origin or by other offices, provided the laws in force at said offices are subject to the same standards of patentability requirements applied in the Republic of Argentina, or
(ii) for applications that do not claim priority under Article 4 A 1 of the Paris Convention, but who prove that the same invention has been granted abroad after the filing date of the Argentine application, the disclosure of whose invention has been made after the filing of the national application, and the granting office has performed the substantial examination and shares the standards of patentability requirements applied in the Republic of Argentina.
For applications subject to the above-described voluntary petition to be granted, the following conditions must be met:
a) That the scope of the application filed in the REPUBLIC OF ARGENTINA is the same or narrower than the scope of the foreign application;
b) That no national background exists on the effective date of filing of the application in the REPUBLIC OF ARGENTINA;
c) That there is no foreign background between the filing date of the equivalent patent, and the effective date of filing of the application in the REPUBLIC OF ARGENTINA, that would affect the patentability requirements of Section 4 of Law 24.481;
d) That the subject-matter claimed in the national patent application is not within the patentability exclusions of Sections 6 and 7 of Law 24.481 and 6 of its Regulation (Annex II of Decree No. 260/96 );
e) That the observations filed by third-parties be evaluated in terms of Section 28 of Law 24.481 and of its Regulation (Annex II of Decree No. 260/96);
f) That the foreign office that made the study of the equivalent patent follows the same patentability standards of application of the patentability requirements as the REPUBLIC OF ARGENTINA for the case under analysis.
In order to petition the application of the present Resolution P-056, applicant must adapt and submit the scope of the local claims to the claims granted abroad with the relevant translation into Spanish, whereupon the National Patents Administration shall issue a decision within SIXTY (60) days.
In addition, the Patents Office may notify applicant to within NINETY (90) running days adapt the scope of the local claims to the claims granted abroad.
The Patents office shall be exempted from applying the foregoing resolution when there are technical-legal grounds, or for reasons of national defense, domestic security, sanitary emergency or other public order reasons duly supported.
Since the entry into force of this Resolution, on October 15, 2016, Resolutions INPI No. P-263/03 and INPI No. P-125/09 shall be repealed, notwithstanding the application thereof to the applications being processed that, as on such date, are already subject to any such resolution, unless the applicant expressly requests the application of this resolution thereto.
The petition for the application of Resolution P-056 is made through a Form attached to the resolution.