The Argentine Patent Law has recently been reformed. The new Patent Law was published on 22 March 1996 (Law No. 24,481 modified by Law No. 24,572, Decree 260/96). A brief history of the legislative process follows:
The GATT/TRIPS regulations have been ratified by the Argentine Congress under Law No. 24,425.
On March 1995 the Argentine Congress approved a new Patent Law legislation. However, since some of the provisions of the bill were considered detrimental to the GATTS/TRIPS accord, the President vetoed the proposed new Patent Law, which was sent back to Congress for review.
On 26 April 1995, the President issued a decree (Decree 621/95) which appoved the implementation of those regulations contained in Law 24,425 (GATT/TRIPS). Then, until a new patent law was passed by Congress and approved by the President, or Congress obtained sufficient votes to override the Presidential veto to the prior bill, Law No. 24,425, Decree 621/95 and the old Patent Law No. 111 (in all that is not inconsistent with GATT/TRIPS) were the governing patent law provisions.
a) First to file system;
b) Assignee filing;
c) No grace period;
d) Novelty, utility, and more than a simple application of available knowledge;
e) Liberal amendment practice;
f) One independent claim only;
g) "Characterized by" claiming practice;
h) No deferred examination;
i) No time limit on prior art to invalidate patent;
j) No opposition procedure;
k) No re-examination or reissue;
l) Patent term : 20 years from filing (previously 15 years from grant).
New Patent Law
The new patent law allows pharmaceutical patents (Article 4), but has established a transition period of five years before these patents are issued. An inventor may presently file a patent application for a pharmaceutical product but such patent would not be issued until the year 2001. Moreover, because the new law establishes that the duration of a patent is 20 years from the date of filing, the above may not for now be a very interesting preposition for inventors of pharmaceutical products.
The regulations of the new law, however, provide that during the transition period - i.e. from now until 22 March 2001 - a patent owner may apply for "exclusive marketing rights" (which make you think if this is not exactly what an inventor pursues when applying for a patent). In order to process such petition, the National Institute of Industrial Property (a new agency created under the new law) should confirm that
a) the inventor has already filed an Argentine patent application;
b) a related application has been filed and granted for the same product after 1 January 1995 in a country member to the GATT TRIPs agreements;
c) The product has been approved for marketing after 1 January 1995 in a country member of the GATT TRIPs agreements.
If all of these conditions are met INPI may grant exclusive marketing rights for 5 years from the moment the product is approved for marketing by health authorities. This authorization will prematurely lapse if the Argentine patent application is granted or rejected during such 5 year period, or if the marketing authorization from the health authority is revoked.
One of the problems when moving from a non-protected to a protected status has to do with third parties involved in the marketing of products over which, under the new rules, a potential patentee may acquire ownership rights.
The new contains certain provisions which tend to regulate such events. Such third parties should provide evidence of a significant investment and marketing activity before 1 January 1995. They should also guarantee that they could fully meet the demands of the market at comparative similar prices.
If the above facts are confirmed, a patentee may not be allowed to remove such competitor from the market but to negotiate a royalty - bearing license agreement.
SOME OF THE PRINCIPAL CHANGES IN THE NEW LAW
(i) The duration of a patent is 20 years from the date of filing (Article 35);
(ii) Applications will be published within 18 months from filing (Article 26);
(iii) The National Institute of Industrial Property (INPI) is created (Article 12 and 90-95);
(iv) Parallel imports are permitted (Article 36 (c));
(v) Compulsory licensing is allowed and regulated under certain circumstances (Article 43);
(vi) Inventions in the workplace received an extensive treatment (Article 10);
(vii) Addition or improvement patents are included in the new law;
(viii) Utility Models are part of the Law (Title III, Articles 53 to 58);
(ix) Pharmaceutical products are now patentable (see above).
Patents that contain subject matter that was not patentable under the previous Argentine law (e.g. pharmaceutical products) may be considered for protection under the new law if the following conditions are met:
The first foreign patent application was filed within a year before 22 March 1996 (the date of the new Argentine Patent Law);
No working, marketing or importation.
If these events are proved, and thus an Argentine patent issued, the duration of the Argentine patent will be the same as that of the first foreign patent filed by the Applicant, but should not exceed 20 years (Article 102).
The provisions regarding compulsory licensing were extensively debated during the parliamentary discussions on the new law. If a patent is not used for three years from the date of issuance or four years from the filing date, an interested third party - which has been unable to negotiate a license agreement with the patentee under reasonable conditions - may request a license from INPI (Articles 42 and 43). Thereafter, INPI will hear arguments from both parties, the patentee and the potential licensee, and decide whether a license should be granted and which is a reasonable royalty for the owner of the technology.
This is obviously, and unfortunately, reminescent of years past when government agencies were mandated to act as intermediaries in technology transfer transactions.
Published in Euromoney´s
Managing Intellectual Property
Patent Yearbook, 1996.