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08 July 2013
Patents and utility models in Argentina are governed by the Patent Law (24,481, as amended by Laws 24,572 and 25,859) and by Regulatory Decree 260/96.
Under Article 35 of the Patent Law, patents are granted for a non-extendable term of 20 years, counted from the application filing date.
Following recent technological advances, it is more important than ever that patent protection be obtained as soon as possible, before further advances make the invention obsolete. In this regard, and as a result of the increasing number of patent applications, the Patent Office faces a major backlog of patent filings. Applications may take eight to 10 years or even longer to be examined before a decision granting or denying them is taken.
Since the 20-year term of the patent is counted from the filing date, a significant part of the protection term is wasted on long administrative proceedings. Article 62.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) establishes that:
"Where the acquisition of an intellectual property right is subject to the right being granted or registered, Members shall ensure that the procedures for grant or registration, subject to compliance with the substantive conditions for acquisition of the right, permit the grant or registration of the right within a reasonable period of time so as to avoid unwarranted curtailment of the period of protection."
In cases of chronic delay, and in order to comply with Article 62.2 of TRIPs, other countries grant extensions to the term of the patent and also rely on provisions related to the provisional protection of patent applications before they are granted. However, in Argentina, neither extensions of time nor provisions specifically related to provisional protection are foreseen.
Unlike under the former Patent Law 111 (whereby patent applications remained secret and their publication was applicable once they were granted), Article 26 of the existing Patent Law requires publication of the application before it is granted, within 18 months as from the filing date of the patent application.
As regards the publication requirement, besides the provisional protection aspect, those investing in research and development must evaluate the risk of eventually having the patent application denied. When faced with this as a concrete possibility established as a result of adequate technical and legal counsel, the application must be withdrawn before it is published, since the administrative entity must preserve up to that moment the confidentiality of the documents received.
Furthermore, as a result of the absence of rules regulating provisional protection, it is contradictory that, on the one hand, disclosure of the content of the invention is demanded, but on the other, the legal system does not provide the necessary legal tools to file a claim in cases where a third party misappropriates the invention during the term before the patent applied for has been granted.
In a recent case, Novartis AG filed a complaint against Laboratorios LKM SA claiming infringement of its patent (AR016351B1) and demanding that LKM cease manufacturing, using, offering for sale, selling and/or importing the active principle and/or the product containing the active principle related to the patent.
On July 3 2012 the Federal Court of Appeals in Civil and Commercial Matters, Division III, upheld the first instance ruling in Novartis AG v Laboratorios LKM in LKM's favour, rejecting, based on different arguments, the complaint filed by Novartis AG. This does not allow (for the purposes relevant herein) any type of provisional protection.
In view of the above, obtaining proper legal advice, including a strategic analysis to determine the necessary actions to be taken during the patent prosecution process, will help patent applicants to avoid unnecessary delays, thus expediting and ensuring that the invention can be protected in the broadest way in the shortest period of time.
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