Eli Salis – Partner attorney at Disain IP
María Dolores Cavoti Sadonio – Associate attorney at Kors Noviks
Argentina is one of the countries that will introduce in 2018 some major changes in its Intellectual Property Law.
That´s why all SMEs should be aware that change is coming and make sure to count on specialized practitioners to guide them through these changing times.
The Decree Nº 27/2018, published on January the 11th, 2018, seeks to reduce and simplify proceedings and timeframes before Public Offices. The main aim of these measures is to ensure a public administration synonym of efficiency, effectiveness and quality in its relations with the citizens.
The Decree is in force since January the 12th, 2018, but some of the changes need to be implemented and developed through specific guidelines, which are still under issuance and revision period. Additionally, resolutions issued by the Patent and Trademark Office (PTO) should also be taken into account.
Given the major and substantial changes introduced by the Decree, the same has also been sent, in parallel, to the Houses of the Congress to be studied and approved under the form of a law.
What are the most relevant changes?
- Rhe opposition procedure is changed: if the parties cannot reach a settlement regarding oppositions within a 3-month time period, the PTO will be in charge of resolving about them. Said resolution can be appealed before Federal Courts;
- Be aware that partial cancellation for lack of use is introduced;
- There is now an obligation to declare the use of the mark, between the year 5thand the end of the year 6th of validity;
- Nullity actions may be solved by the PTO, instead of a Court of Justice.
One of the most important changes is the one operated regarding the opposition proceeding: mediation and Court actions are no longer mandatory to overcome an opposition, being the PTO in charge of taking a decision on the subject. This will reduce the costs for SMEs when solving oppositions in this country.
Regarding Patents and Utility Models:
- It is no longer necessary to submit the certificate of priority, being enough to claim the priority specifications. It is during the substantive examination that the Examiner might request a copy of the priority document and the corresponding translation;
- Reduction of the terms for the proceedings, i.e., the term to pay the substantive examination is reduced from 3 years to 18 months, for example, for Patents, and from 3 years to 3 months, for Utility Models;
- For Utility Models once the examination fee is payed, the PTO will conduct the substantive examination, then publish the application and if no observations are filed, the application will be granted.
Regarding Industrial Models and Designs:
- Hand-made models and designs can now be protected.
- New exceptions regarding the loss of novelty
- Possibility to request delaying the publication of the grant for up to six months,
- An application may include up to 20 models/designs, as long as they belong to the same class according to the International Classification,
- Renewals can now be filed six months before the expiration date and up to six months after said due date (with the corresponding increase in the fees).
IP owners and practitioners will have to monitor further developments and interpretation of this new piece of law, not only from the PTO but also from the House of the Congress. There are still several interesting issues that will be subject to a follow up report. Stay tuned!