INPI

Argentina – National Institute of Industrial Property Resolution 288/2019

By MoellerIP Team

RESOL-2019-288-APN-INPI#MPYT

City of Buenos Aires, October 21, 2019

In consideration of Law No. 22362 on Trademarks and Designations and modifications thereto , regulatory decree 242 dated April 1, 2019, Resolutions 214  of July 11, 2011, No. 266 of October 23, 2012, No. 250 of September 27, 2018, No. 123 of May 23, 2019, all of them issued by the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY (INPI) and Disposition of former  National Organism of industrial Property dated 13 June 1963 and

WHEREAS

Article 10 of Annex to the regulatory decree 242/2019 establishes that the proceedings followed in respect to the Authority of Law 22362 on Trademarks and Designations and modifications thereto, must be filed with INPI

Proceedings at INPI can be filed personally or through the INPI´s web page as per Resolution INPI No. P-266/12.

The filings entered personally in the Organism must be made through the forms corresponding to trademark application, trademark renewal and opposition, approved by Annex to Resolution INPI No. P-214/11, which have been further amended several times

Article 1 of Resolution No. P-250/2018 establishes that all cases before INPI shall be filed and followed electronically and shall be filed through INPI´S webpage.

Article …

EPO and INPI Argentina sign first Reinforced Partnership Agreement

By José Santacroce, Partner and Head of Patent Department

The European Patent Office and the National Institute of Industrial Property (INPI) of Argentina are stepping up their cooperation. EPO President Antonio Campino and INPI President Damaso Pardo signed on 2 July 2019 a Memorandum of Understanding (MoU) to establish a Reinforced Partnership programme between both offices. This comprehensive cooperation agreement is the first of its kind to be set up by the EPO with an IP office in Latin America. The meeting of the Heads of Office took place on the margins of the IP Executive Week in Alicante.

According to Antonio Campinos, thanks to this agreement, the EPO can work more closely with one of the largest economies in Latin America and strengthen its relations with this dynamic region. Building on EPO long-standing ties with INPI, the agreement will help better meet the needs of companies in Argentina and users around the globe.

According to Damaso Pardo, this agreement aims to render the respective patent systems as efficient, user-friendly and reliable as possible for innovators; a robust patent system is an essential instrument for stimulating innovation, entrepreneurship and economic development.

Through their Reinforced Partnership programme, the EPO and …

INPI Resolution No. 123/2019

By INPI Argentina

Moeller IP Advisors kindly informs to clients and friends that on May 27, 2019, the INPI Resolution No. 123/2019 was published, clarifying the recent modifications of our Trademark Law and its regulatory decree.

By this Resolution, the following is determined:  

1. Multiclass applications are not allowed. Trademark applications should be filed indicating only one class of the Nice Classification.
2. The obligation of filing a Declaration of Use falls only upon trademarks and trademark renewals granted as of January 12, 2013.-
3. A grace period of up until January 12, 2020 is stablished to comply with the submission of the Declaration of Use for trademarks and trademark renewals granted between January 12, 2013 and January 12, 2014.- Further information regarding the Declaration of Use may be found
4. Trademark renewal applications may be filed as from 6 months prior to the expiration date and up to 6 additional months from said date.
5. The notification system of our TM Office remains the same until further regulation is issued regarding electronic notifications.
6. Two extension of term of 10 and 5 days is automatically granted to the ordinary 30 days term for replying to an Official Action provided that the corresponding fee is

Argentina INPI – Resolution 112/2019

By José Santacroce, Partner and Head of Patent Department

The Argentine INPI has published on 29 April 2019 Resolution 112/2019 with the objective to accelerate substantive examination of Argentine first filing patent applications.

The text of said resolution is the following:

SEEN the file EX -2019-16551501- -APN-DOINPI, of the Law of Patents of Invention and Utility Models N° 24,481 (t. o. 1996), as amended by laws Nos. 24,572, 25,859 and 27,444, and by the Regulatory Decree N° 260 dated March 20, 1996, Annex II; and

CONSIDERING:

That, today, Argentina is undergoing a transformation and modernization process which aims to an economy growth based on the incorporation of local and world value chains, regarding innovation as the main axis of the productive development.

That, in this frame, the protection of innovations through the system of patents of invention and utility models fulfills a significant role in the competitiveness of firms, especially our PYMES (Small and Medium Sized Companies, from the acronym in Spanish), which invest in innovation and request to protect cash advances and inventions to be afterwards apply to an industrial development.

That this INSTITUTE is adopting several measures, starting with the reform to the proceedings of Patent Law, …

Brazilian Senate Approves Special Protection Bill of “High Reputation” Brands

By Carlos Cavalcanti, Managing Partner Moeller IP Brazil

The Brazilian Senate Plenary approved on Tuesday (2) the bill that creates rules for special protection of “high reputation” brands. PLC 86/2015 allows the holder of an industrial trademark to request the Brazilian PTO (Inpi) to recognize this title at any time. The text has been modified and will have to be returned to the Chamber of Deputies.

“High reputation” is a classification that guarantees a brand protection in all markets, not just the one in which it operates. With this recognition, no other company can be registered with the same name, even if it is from another branch. Inpi currently recognizes 41 “high reputation” brands.

PLC 86/2015 regulates the Industrial Property Law (Law 9.279 / 96) to specify that “high reputation” may be requested at any time. Currently, only an INPI internal standard addresses this issue. According to the rule, the interested parties must wait for a third party to request the registration of the same mark in another branch.

The text also determines that, in case of approval of the application, the recognition of its “high reputation” will be noted in the trademark register. Thus, the owner of the …

Overview of Patent Prosecution Highway programs in Brazil

By Marta Garcia

Since 2016, the Brazilian PTO (INPI) has been implementing several Patent Prosecution Highway (PPH) programs with different PTOs in order to accelerate examination of patent applications and try to reduce the large existing backlog.

Under the PPH program, participating patent offices agree that when an applicant receives a final decision from a first patent office concluding that at least one claim is allowed, the applicant may request expedited examination for the corresponding claim(s) in a corresponding patent application that is pending in a second patent office.

Below is an overview of the PPH programs currently running in the INPI:

• PPH INPI-USPTO: On January 11, 2016, a PPH pilot program started between the INPI and the United States Patent and Trademark Office (USPTO).

During Phase I of the pilot program, which ran until May 10, 2018, the INPI only accepted patent applications in the oil and gas industry.

On May 08, 2018, the INPI published Resolution No. 218/18, which established Phase II of the program. This new phase has been running since May 10, 2018 and will finish on April 30, 2020, or when 200 applications are accepted, whichever occurs first.

The main difference of Phase II …