By Moeller IP Advisors
On Friday, June 23, 2017, the Argentine Association of IP Agents (AAAPI) published in their Bulletin No. 1415, the discussion relating to the possible increase of official fees. This has caused many questions for foreign colleagues and clients, especially in regards to the fee increase amount as well as when the increase will go into effect.
We are happy to report that as of publication date, this matter is only in discussion.The important discussion points are summarized in English below.
Such increase is under consideration – when it will be applied or how much will the fees raise is still unknown. The AAAPI and the INPI are debating this issue, but no official communication has been published to date. The June 23rd Bulletin enclosed the terms of the project under debate, including the suggested new fees and effective date.
Moeller will keep you informed of the further developments as they arise.
Source: http://aaapi.org.arRead More
Over the past few years numerous containers were seized or retained by the Argentine Customs Authority , or were never claimed by the recipients.
In January 2017, the Customs Authority concluded that there were more than 4000 containers in its custody, containing toys, clothes and food, that in some cases had been unclaimed for up to two years.
On January 21, 2017, Argentine President Mauricio Macri, signed Executive Decree 51/2017 freeing 2995 containers and 973 bulks to be transferred to the Ministry of Social Development for support of welfare foundations.
The decree pointed out that products retained in the Custom’s deposits were occupying valuable space and could be better used to fulfill needs of residents. Moreover, the conditions in which they were being stored were not optimal for the preservation of the products, and many might be damaged, deteriorated or in any way lose their value or use.
To this purpose, a special ad hoc commission has been created, integrated by the Custom’s Authority and different Health Authorities, in order to admit and authorize the products as fast as possible in order to send them to the appropriate welfare associations.
This is a new and creative way of dealing with different products that may be held in Customs.With measures like the Argentine decree the amount of abandoned products can be reduced, and consequently, the amount of space used by Customs deposits is decreased while providing products for vulnerable families.
Executive Decree in Spanish: http://servicios.infoleg.gob.ar/
During substantive examination of patent applications in the chemistry, pharmacy and biotechnology fields, Argentine Examiners often require the inclusion of disclaimers as a condition for granting. These disclaimers consist of certain standard expressions, usually suggested by the examiner with purpose, in the view of the Patent Office, to specifically confirm that the patent does not cover any matter excluded from patentability by the Patent Law. The disclaimers are intended to avoid any interpretation that could extend the scope of protection to non-patentable subject matter. Even when a claim defines clearly and accurately its intended scope of protection, the Office may require the inclusion of a disclaimer if only to make it clear that examination is only considered to be complete when all the requirements provided for by the Patent Law have been analyzed, thus preventing third parties from being unduly affected by patent rights having scope that might be interpreted beyond patentable subject matter.
This should not discourage inventors from filing a patent application or continuing with its prosecution, as the inclusion of disclaimers is mainly intended to protect the Office against any allegations of loose interpretation of the law and its Regulations. Furthermore, in the following paragraphs we describe a case that was finally decided in court, in which the ruling disregarded the disclaimer and the decision was based only on the matter that could be protected under law at the time of granting the patent.
The history of this practice began under Argentina’s former Patent Law, No. 111, which excluded from patentability all pharmaceutical or veterinary products used in therapeutic methods for the treatment of humans or animals.
While the old law was in force, in particular in the pharmaceutical and veterinary fields and even in the agrochemical field, there were inventions referring to compounds having dual activities, for example, an invention directed to a compound having activity as a cosmetic agent or as a dermatological agent for specific diseases. A similar example could be found in the agrochemical field where the compound could be applied as an acaricidal agent to the animal’s site or habitat or directly on the body of the animal in order to remove the ectoparasite. In such cases, it was possible to grant a patent covering a compound for a non-excluded use but it was necessary to limit the scope of protection so as to clearly dismiss any interpretation involving excluded subject matter. The Office started then to require the inclusion of disclaimers.
Returning to the latter example, given that an ectoparasite is considered a disease vector, the compound in question may have an indirect effect on the health of an animal and in such event said compounds fall within the category of pharmaceutical or veterinary products. In cases like this, the Office required limiting the scope of protection of the compound to those applications not excluded from patentability by means of a disclaimer of this type: “compound X except for its applications in humans or animals”. This was intended to provide protection for a compound with a use limited to a non-pharmaceutical or veterinary use.
Under the new law these disclaimers applied to products were no longer necessary, since pharmaceuticals or veterinary products became patentable. However, in cases involving other subject matters excluded from patentability, the use of disclaimers is still a tool frequently used by the Argentine examiners, where there are doubts about the real scope of protection of a patent and it is deemed necessary to specifically define it within the framework of the patent law.
Recent examples can be found in the biotechnology field. For example, if the application claims a method for generating a transgenic plant, the Office may require the inclusion of a disclaimer reading “provided that the plants obtained by such method shall not be included”. In this case, although the claim is directed to a method, the examiner requires the inclusion of such disclaimer based on the general principle by which the scope of protection of a process extends to any new products obtained by it. This concept is set forth in the Patent Law as follows: Section 88.
“For the purposes of civil proceedings, where the subject matter of the patent is a process for obtaining a product, judges shall require the defendant to prove that the process used to obtain the product is different from the patented process. However, if the product obtained as a result of the patented process is not new, the court shall be entitled to order the plaintiff to prove that the process which the defendant uses to obtain the product infringes the patented process ( )”
As written, the scope of protection of a process extends to the product obtained by it when the latter is new and this only applies in the context of civil proceedings for patent infringement.
Another example is related to modified plant cells. In this case the Office requests the inclusion of the following disclaimer “excluding cells which are capable of generating a complete individual” in reference to totipotent cells and in order to avoid the protection of plants, which are specifically excluded from patentability.
Notwithstanding the Office’s practice, there have been court decisions challenging the legal effects of such disclaimers.
For example, in the case named “Cease and desist of use plus damages. Admissibility. Undue exploitation of the insecticide/acaricide known as FIPRONIL”, the product marketed by codefendant LABYES S.A. allegedly infringed Patent no. 255,628 owned by the plaintiff, but the judgment was appealed and reversed.
Patent No. 255,628 discloses “an N-Phenylpyrazole derivative excluding its use for the treatment of an animal body carried out by a physician or a veterinarian as a therapeutic method, a process for preparing it, a composition comprising it, a method for controlling arthropod pests, plant nematodes, worms and protozoa, and compounds useful as intermediates.”
FIPRONIL is a drug for veterinary pharmaceutical use described by patent 255,628, which covers the right to work the patent in general, but it has a disclaimer related to the protection of industrial/intellectual rights in such drug, a disclaimer which, in the defendant’s opinion, includes the use made by defendant LABYES S.A. of the drug in question.
However, the ruling reversing the judgment in this case established the following interpretive concepts:
1 – the authority to establish the scope of the patent and the interpretive criterion applicable for its determination is vested in the court, and is not in the hands of chemistry or veterinary experts.
2 – FIPRONIL is an insecticide and never ceases to be an insecticide: “FIPRONIL does not cure organic alterations caused by fleas and/or ticks” … “it is the body that regenerates or heals the alterations caused by the pathology”.
3 – the patented product is a chemical compound intended to remove certain types of parasites that mainly affect the skin of animals, parasites that cause injuries, but once removed by the application of such product, the body is capable of healing any existing after effects.
Therefore, it is not a medicament, but an insecticide, an acaricide insecticide.
One could say it is a “medicine” but only to convey the idea that it is an appropriate means for combatting a temporary condition suffered by an animal.
Any specific product to remove parasites affecting the skin of animals, whatever the mark or trade name, is an insecticide-acaricide, such as that commercialized by the firm LABYES S.A. under the name FIPROLINE, and does not fall within the exclusion included in patent 255,628, and consequently, it infringes the patent rights.
It was based on this concept that the patent owner requested the reversal of the decision ruling that the product marketed by codefendant LABYES S.A. did not infringe the rights arising from patent No 255,628.
Plaintiff added that FIPRONIL is essentially used for cleaning purposes, because when applied on the skin of the animal, the skin surface becomes free of insects and mites. It was also explained that this product cannot be considered at all as a veterinary product or veterinary clinical application, since it is used as an insecticide/acaricide, i.e., the equivalent of an external antiparasitic (as it removes and kills parasitic insects and mites such as fleas, ticks, etc.).
Furthermore, FIPRONIL cannot be considered a pharmaceutical or veterinary product, but rather an external insecticidal/acaricidal or antiparasitic product. This is supported by the fact that the latter are included in a different class or classification of patents (A01N) to that of pharmaceutical, medicinal or veterinary products (A61K, A61D)
From the conclusions of a veterinary expert it appears that the external antiparasitic products FRONTLINE and APTOPRONIL, comprising Fipronil, are indicated as a treatment of external parasitic diseases, as they cause the removal of ectoparasites that cause diseases, such as fleas and ticks.
The veterinary expert added that in spite of the fact that its use or administration is indicated by veterinarians, FIPRONIL is a specific product for parasite removal from the skin of animals and there is no doubt that the insecticide-acaricide which the co-defendants market under the name APTOPRONIL-M does not fall within the disclaimer included in patent 255,628.
As can be seen, in this legal action FIPRONIL was not considered a pharmaceutical or veterinary product but rather an insecticide acting to remove external parasites. The court did not take into account the fact that said insects can act as disease carriers, which was the reason why the office had requested the disclaimer.
Under this interpretation, the disclaimer introduced in the product claim had no effect whatsoever, and the product intended to treat animals marketed by the defendant fell within the scope of the patent claims, which were then awarded full protection against infringement.
What is Big Data?
Big data describes the large volume of data. Through the network and the use of intelligent devices, humans are constantly creating and storing information. Facebook posting, twitter feeds, web contents, emails, gps signals, utility billing records, among others, generate information at a large volume with a rapid rate of change that cannot be processed or analyzed using traditional processes.
In an effort to simplify it, many experts have referenced it as the “5 V’s”: Volume, Velocity, Variety, Value and Veracity of data.
Big Data problem
What is the problem? The answer is that rules for data protection do not advance at the same pace that Big Data, and regulations are necessary to ensure the privacy of users. Many times users give their data, without being very clear about what is done with it.
To encourage companies to treat (CHECK) with this kind of data as integrated with the principles of the processing of personal data, the Argentine Ministry of Information Technology and Communications has created a “Big Data National Observatory”. The purpose of the observatory is to analyze the evolution of data technology in relation to innovation, technological, political, economic and social conditions in a sustainable framework.
Resolution 11-E/2017 – published in June 2017 – sets that Big Data Observatory´s objectives as:
1. Analyze the evolution of Big Data technology in terms of possibilities of innovation, public use, technological, political, economic and social benefits in a sustainable framework.
2. Study the regulatory framework for the use of personal data and its relationship with the development and promotion of this kind of data.
3. Promote and create secure and sustainable public platforms for innovation and new applications inside and outside the State.
4. Establish exchanges with provincial and municipal states, SMEs, entrepreneurs and micro-entrepreneurs in the implementation and its use.
5. Analyze risks and formulate standards of good practices.
6. Articulate research and developments within the National State and academic institutions, enhancing local resources.
7. Promote its use in public security and in the fight against crime.
8. Carry out reports, audits, compendiums of good practices, proposals for regulatory updating, technological platforms for public use, among other proposals.
Since the resolution creating the observatory, no new information related to it or its advances on different fields has published, but Argentinean’s citizens can consider this is a first step to improve Big Data protection.
By Marta Garcia
On March 3, 2017, a Patent Prosecution Highway (PPH) pilot program started between the National Institute of Industrial Property of Argentina (INPI) and the United States Patent and Trademark Office (USPTO).
The pilot program will run for a period of three years ending on March 2, 2020, which may be extended if necessary to adequately assess the feasibility of the PPH program. Both offices will continually evaluate the results of the PPH program to determine whether and how the program should be modified. The offices also may terminate the PPH program early if the volume of participation exceeds a manageable level, or for any other reason.
Under this PPH pilot program, an applicant who receives a positive ruling on a patent claim(s) from either the INPI or the USPTO may request accelerated prosecution of a corresponding claim(s) in the other office. The PPH allows the applicant to obtain a patentability decision in the office of later examination (OLE) more quickly. Furthermore, the PPH promotes patent application processing efficiency by allowing the examiner in the OLE to reuse the search and examination results from the office of earlier examination, thereby reducing workload and duplication of effort.
Additionally, as previously informed in our blog, on October 15, 2016 Resolution P-56/2016 entered into force in order to speed up the granting procedure of those Argentinian patent applications for which an equivalent patent has been granted by a foreign patent office with similar patentability criteria to those of the INPI.
Source: https://www.uspto.govRead More
Further to our last post of January 24, 2017, we return to the final topics of registration of copyright in Argentina.
Having clarified the issue of which rights are suspended in my previous article,when not complying with the registration, the rule mentioned in Article 57 of the Argentinian Law 11.723 raises two new questions: If the registration of all published work is mandatory, does the registration then constitute copyright? Is this rule unconstitutional and contrary to international treaties?
Regarding the first point, the National Chamber of Civil Appeals in 2003, in the case “Ruiz Vigil, Encarnación vs. Productions Publiexpress,” has developed a conciliatory response by determining that the author’s right over his work arises undoubtedly from its creation. In this sense, the National Chamber determined that the only effect of non-compliance with the registration is “the suspension of the patrimonial right, allowing the free use of the author’s work without any authorization or any payment”. In this way, the judges added in his resolution that“appears that the registration is not constitutive of copyright, but according to Article 63, is a requirement for its exclusive exercise.” Therefore, any author who wishes to exercise his economic right exclusively on his work published for the first time in Argentina must register every work.
In relation to the second enquiry, although the mandatory registration would not be contrary to the principle that the author’s right over his work arises undoubtedly from the creation of the same, as we explained above, part of the doctrine and jurisprudence considers this unconstitutional. If we consider that Argentina has been part of the Berne Convention since 1967, which states that no formality is necessary to enjoy and exercise all copyrights, together with the reform of the national constitution in 1994 that establishes the supremacy of the international treaties over the national laws, then the suspensory effects of the Article 63 would be contrary to these precepts. Although there is still no unified thinking on this point, the jurisprudence has been oriented to apply international agreements to domestic situations when there is an unjustified delay in adapting national legislation.
Finally, it remains to be analyzed on what works this registration obligation falls. As we mentioned in our first paragraph in relation to Article 57, the compliance of registration only falls on national works, excluding the foreign works. In this sense, it is understood as a national work those where the first publication was in Argentina. Therefore, the Berne Convention would apply (provided the country of publication is a member) for foreign works, and so the author is not obliged to comply with the requirements of Article 57. This is reaffirmed by Article 13 of Law 11.723, when it states that “All provisions of this Law, except those of Article 57, are equally applicable to scientific, artistic and literary works, published in foreign countries, regardless of the nationality of their authors, provided that belong to nations that recognize the right of intellectual property.”
Therefore, it is in front of this difference between national and foreign works in which the doctrine calls “inequality” in reverse for the works that were published in Argentina.If foreign works are protected in our country without any formality, then Argentine citizens should enjoy the same benefit. Otherwise we would face a violation of Article 16 of the National Constitution that establishes equality before the law.
After analyzing the obligation of register copyright in Argentina regarding all of the above cited issues, we understand that the most important points to take into account are the following:
- Registration is obligatory for works publish for the first time in Argentina;
- The National Copyright Office is the corresponding entity in charge of the register;
- The obligation to register must be fulfilled within three months of the publication of the work;
- The registration is not constitutive of author’s right over its work; it is only a formality, whose fulfillment guarantees the full enjoyment of the patrimonial rights over the work;
- The lack of registration of any work published for the first time in Argentina suspends the exclusive right to exploit the work of any author, enabling third parties to use it without their authorization and a prior payment;
- The registration gives a certain date to the creation of the work and reliable proof of authorship in front any kind of conflicts;
- Any circumstance that refers to the work, such as contracts and decisions of the courts over them, must be recorded to be effective against third parties.
Source: Villalba Carlos A. – Lipszyc, Delia, “Copyright in Argentina”, Buenos Aires,La ley, 2009.Read More
OPINION by Maria Sol Porro
In copyright, it is a well-known principle that every work has been protected since its creation. This power is not subject to any formality. In addition, the Berne Convention for the Protection of Literary and Artistic Works, promulgated in Argentina in 1967, states that “the enjoyment and exercise of these rights [copyrights] shall not be subordinated to any formality.” However, the Argentinian copyright law No. 11,723, provided in its Article 57, states the compulsory registration of all published national works, thus generates controversy in several areas.
First of all, we must determine that the above mentioned Article 57 states that the national publisher has the obligation to register the complete copies of any “published work” in Argentina, within three months of its publication. As a published work it being understood “those who have been published with the consent of its authors […] and being available to the public (Art.3 – Berne Convention).” In this sense, it is ruled out that registration is compulsory for unpublished works, and the registration of these works is voluntary. Therefore, we find the first controversy about the character “public” of a work, due to the fact that a work is not considered “published” by the mere fact of being communicated or made known to the public. An example, is the university thesis presented to a limited set of people.
Secondly, a new conflict arises regarding the consequences of non-compliance with the registration of works published at the national level. As stipulated in Article 62 of Law 11.723, compliance with the registration obligation guarantees the copyright of the author’s work. Therefore, it is understood that in breach of this obligation, the author ceases to hold the exclusive right to his work, and in addition will be fined. However, this suspension only covers the economic or patrimonial right of the author. To clarify, this means that third parties are entitled to reproduce, edit and execute, without prior authorization and payment to the author. Therefore, the suspension of the economic rights does not affect the moral right as no third parties can make any modification to the work or omit the author’s name.
As the discussion becomes more interesting, I will analyze the last two points in my next post.
To be continued …
Source: Villalba Carlos A. – Lipszyc, Delia, “Copyright in Argentina”, Buenos Aires, La ley, 2009.
On December 7, 2016, the United States Embassy in Argentina awarded the first “Entrepreneur of the Year” Award to three Argentinean entrepreneurs who have demonstrated their commitment to technology innovation.
The award was based on entrepreneurial spirit, innovation, strategic direction, market impact, and social responsibility and the panel of judges chosen by the Embassy included government, business, and NGO representatives. The winners of the award were in three categories: NonProfit, For-Profit and Renewable Energy.
Gino Tubaro from Atomic Labs, who before the age of 20 created an economical and sustainable robotic hand, won the Non Profit category.
The winner of the For-Profit category was Ezequiel Escobar, from USound who in collaboration with a student’s group in Jujuy, developed an application that transforms the smartphone into a hearing aid for people with diminished hearing capacities.
Finally, Nicolás Canevaro from Semtive, won the renewable energy entrepreneurship category by producing vertical wind turbines that seek to replace the capacity of solar panels with lower cost and higher performance.
The awards come at a time when the Argentinean Chamber of Senators is debating laws that will help entrepreneurship.
This article briefly addresses the most important issues related to trademark licensing and the benefits from recording such agreements in Argentina.
Mariano address the following issues in detail relating to:
- No Mandatory Formalities in Argentina
- License of Unregistered Trademarks
- Recordal of Licenses with INPI
- Recordal of the Trademark Rights with Customs
- Importance of Entering into a License When Trademarks Are Owned by a Foreigner and
- Observance of Antitrust Regulations When Drafting License Agreements
To read the article in its entirety, as it appeared in the November/December 2016 issue of The Licensing Journal please download the following PDF document.Read More
On August, 5, 2016, Argentineans were warned about adulterated products for washing clothes by the Argentinean National Administration of Medicines, Food and Medical Technology (ANMAT). This situation was discovered through the strong commitment of ANMAT to safeguard and protect citizens from counterfeit products.
In this case, ANMAT detected that false products for washing clothes were being commercialized with the trademark “ACE.” In order to identify the products ANMAT recommended people verify the expiration date and the batch number of the product. If the information is not detailed on the label or the packaging of the product, the recommendation is not to buy that product.
But the most interesting aspect of this warning is that ANMAT has also recommended the society to check the differences between the designs of the product label used in the original and the adulterated product. To be more accurate, ANMAT has shown the following four pictures:
This kind of warning is a clear example that ANMAT is not only collaborating in the protection of human health, ensuring that medicines, food and medical devices are available to citizens, but also in the prevention of counterfeit products reaching the market.
Source: http://www.anmat.gov.arRead More