By Moeller IP Advisors
On January 11, 2018, Presidential Decree No. 27/2018, which introduces many amendments were made to the Argentinian Trademarks, Patents and Industrial Designs Laws, was published in the Argentinian Official Gazette (Link to the official publication: https://www.boletinoficial.gob.ar/#!DetalleNorma/177429/20180111).
The main modifications are in connection to the following:
- Trademark opposition procedures: these no longer depend on the parties’ negotiation. Three months are given as of the notification of the opposition to negotiate between the parties. In case the opposition is not withdrawn, the Trademark Office will study the case and issue a resolution.
- Nullity actions are solved by the Trademarks Office, and not a Court of Justice.
- Cancellation actions for non-use are solved by the Trademarks Office and not by a Court of Justice. Trademarks can be partially cancelled.
- Use requirements: A declaration of use must be filed before the Trademarks Office between the 5th and the 6th year of the registration.
- Reduction of terms: Terms for filing documents, paying examination fees, conversion of patents into utility models and answering official actions are considerably reduced with the purpose of expediting the procedure.
- Priority document: it will not be necessary to submit this document when filing the application. However, the examiner may request this document during the substantive examination stage.
- Change of registration procedure: Upon payment of the examination fee (within three months as from the filing date), the Patent Office will conduct the substantive examination. After that, the application will be published. If no third parties observations are filed within a 30-day term, the application will be granted.
- Reduction of terms: Terms for filing documents, paying examination fees, conversion of utility models into patents and answering official actions are considerably reduced with the purpose of expediting the procedure.
- Protection of craft products.
- Multi-filing: A single application may include up to 20 industrial models or designs as long as they are included under the same class of the Locarno Agreement.
- New technological ways for presenting drawings: Drawings, photographs, digital reproductions.
- Section 14 related to the Paris Convention priority right was revoked.
- Publication of granting decision can be suspended.
- Renewal term: The application for renewal can be filed within six months before the expiring date. A six-month grace period is granted for filing the renewal upon payment of an additional fee.
On January 17, 2018, the Argentine Association of IP Agents (AAAPI) met with the Argentine PTO (INPI)’s authorities to discuss the implications of Presidential Decree No. 27/2018, how it is to be interpreted and which actions shall be taken in this regard in the near future.
At the beginning of the meeting, the AAAPI was informed that the INPI had issued resolution No. 001/2018, indicating how the terms would be calculated once the Decree comes into effect, which terms would be applied (the shorter ones would be applied) and detailing which norms of the Decree shall be immediately functioning (indicated in an Annex I) and which would require to be implemented (Annex 2). The annexes have not been provided yet.
The AAAPI was also informed that they would be consulted for the drafting of the regulations to be implemented by the Decree. Furthermore, it was stated that the INPI shall count on the human and economic resources to be in charge of the new tasks and proceedings entrusted by the Decree.
Please find below the most important aspects evaluated in the meeting:
- The most controversial issue is the interpretation of the new Article 16 (resolution of oppositions). According to the INPI´s understanding, it is immediately in force and the term of three months started to be applicable and to run as from the date in which the Decree became effective.According to the INPI´s idea, if the annual term expires, for example, on February 15, 2018, said annual term shall be applied, and if the term expires, for example, on May 15, 2018, the deadline shall be based on the 3 months established by the Decree, which expires on April 12, 2018.The lawsuits that were filed before the Decree became effective shall be submitted to the Court of Justice. They will receive the lawsuits filed after the Decree became effective but they will not submit them to the Court of Justice, until the course of action is decided by regular means.The AAAPI strongly criticized this interpretation and requested it to be reviewed. The INPI said that they would consider the AAAPI´s observations and see how they would proceed.Anyway, it must be taken into account that the expiration of the quarterly term of the new Article 16 without having obtained the removal of the oppositions, does not mean that the trademark shall be automatically cancelled, but on the other hand, it gives the authority to the INPI to decide on the remaining oppositions. Furthermore, the AAAPI understands that agreements with removal of oppositions can be filed after the expiration of the quarterly term and provided INPI had not yet decided the matter.
- For now, the “T” (toda la clase – Spanish for “all the class”) will be allowed. It is possible that some time ahead the TM Office might request the list of products or services, though apparently the class heading will be accepted Article 10. The text of the new Article 10 was created for an eventual multiclass application.
- Oppositions as paper submissions will still be accepted (Article 14). It is understood that the INPI will issue an explanatory note on this matter. During the meeting, the INPI’s authorities declared that ultimately, the right of filing on paper arises from the constitutional right to file requests with the authorities.
- The new Article 18 (INPI’s view of a case submitted to Court) only has the purpose of confirming if and how the application was decided.
- The current practice related to renewals will continue without amendments. In fact, Article 20 was not modified by the Decree.
- The INPI does not contemplate to declare cancellation ex officio (Article 26). Partial cancellation shall be regulated in order for same not to be retroactive.
PATENTS AND UTILITY MODELS
- The written application shall not be mandatory any more (Article 12), in order to start with the electronic signature.
- The term of 90 days as from the filing date for adding priority and assignment documents plus a translation thereof, will not be mandatory, but this material can be requested during the substantive examination (Article 14), for which a term of 30 days shall be stipulated (this term could be possibly extended to 90 in light of the AAPI´s claims).This “extended” filing shall not be applied to trademarks or industrial designs.
- As in trademarks, the power of attorney will not be necessary and it shall be sufficient to invoke the capacity of proxy-holder. Now if the application is filed without holding a proxy from the applicant, a copy of the Power of Attorney shall have to be added once it is obtained.
- The term to request the substantive examination of 3 years is reduced to 18 months (Article 27). For the terms in progress, the once expiring first shall be the one applicable, counting Decree´s as from the date of entry into force. For instance, if the 3 year-term expires on December 22, 2018, said deadline shall be applied, but if same expires on December 22, 2019, then the Decree´s deadline of 18 months shall be applicable (which would have started running on January 12, 2018 and would expire on July 12, 2019).
- A quick (accelerated) process for utility models will be applied, with the following characteristics:
- A time period of only 3 months to request the substantive examination.
- It is to be published after the substantive examination is overcome.
- If same is rejected, there will be no publication.
- As there are few cases, it is possible that the INPI requests the payment of the examination.
- The new Article 67 eliminates the need for the applicant’s signature or legal representative thereof.
- In the definition of what can be protected, the “craft” articles were added (“the shapes and/or aspects applied to an industrial or craft product, granting an ornamental nature thereto” (Article 3).
- The list of facts not destroying novelty has been broadened (disclosure made within 6 months before the application or priority by the author, or by an illicit act by a third party, or a mistaken publication from the INPI) (Article 6).
- Multiple applications will be accepted: up to 20 designs, provided all belong to the same class. Applications can be divided if the designs belong to different classes (Article 9). The option of 20 designs in one application will possibly avoid many office actions.
- Pictures (photos) shall be accepted and the description will be optative (Article 10).
- Renewal will be filed within the last 6 months, and within the 6 months after the expiration of the design, the “reinstatement” can be requested (Article 11). The INPI considers the first part already operative (renewal, though it still receives renewals filed between 6 and 9 months before the expiration), but not the second part (“reinstatement”), since a tariff has not yet been set for the latter.
- The administrative stage must be concluded (statement with INPI) before filing an appeal against the refusal with the Federal Courts (Article 12).
- Upon applicant’s request in the application, the publication of the design can be extended for 6 months (Article 16).
- The inclusion of the criminal regulation in the Decree would refer only to the update of the penalties (Article 21).