Argentina: Patents: Argentine Patent Office issues an enlarged PPH program

by Ignacio Sánchez Echagüe (Marval, O’Farrell & MairalArgentina)

The Argentine Patent Office issued an enlarged PPH program that would significantly accelerate the prosecution of applications.

On September 19, 2016, the Argentine Patent and Trademark Office (ARPTO) issued Regulation No. P-56/2016 which, under certain circumstances, allows applicants to accelerate prosecution of pending patent applications. This Regulation became effective on October 15, 2016.

Under this regulation, the ARPTO will consider that any patent application whose examination has not begun by October 15, 2016 satisfies the substantive requirements of patentability (novelty, non-obviousness and industrial application), provided that a patent has been granted abroad for the same invention (regardless of whether a priority has been claimed or not) by a foreign Patent Office carrying out substantive examination in a country whose Patent Law has the same substantive requirements as the Argentine law.

In such cases the patent will be granted provided that:

  • the scope of the claims of the Argentine application is the same as or narrower than that of the foreign patent;
  • there are no domestic anticipations;
  • (where no foreign priority has been claimed) the disclosure of the invention has taken place abroad after the filing date in Argentina;
  • the subject matter is not barred from patentability by the Argentine Patent Law;
  • third-party oppositions, if any, have been studied; and
  • the foreign Office that granted the equivalent patent shares the same patentability standards.

Applicants can voluntarily request the application of this regulation. In this case, the Patent Office will issue a decision within 60 days after the request is filed.

Alternatively, the Patent Office can issue an office action requesting the applicant to conform the scope of the claims to that of a granted equivalent. The term to comply with this request will be 90 days.

To apply these resolutions the ARPTO will require:

  • a copy of the foreign patent;
  • a translation of the claims approved in the foreign patent;
  • that the claims are conformed to those of the granted patent (excluding those claims that are not acceptable according to the Argentine Patent Law) and meet the domestic formal requirements (characterizing clause; single object; one main claim [first], and all remaining claims directly or indirectly subordinated thereto; non-functional language; etc.)

The Argentine Patent Office is allowed to suspend the application of these regulations based on sufficient technical and legal reasons or national defence, interior security, health emergency, or any other reason of ordre public.