By Moeller IP.
The Argentinian Patent and Trademark Office published the Resolution Nr.16-2020 in the Electronic Official Bulletin of March 18, 2020, introducing the following notices:
Due to the coronavirus (COVID-19), to suspend until April 3, 2020, all terms related to summons, office actions, requirements or notifications, as well as legal or regulatory summons, office actions, requirements or notifications, being in progress at the date March 12, 2020.
The suspension of terms shall not prevent to consider as duly met, the acts that have been filed or are filed within the original term conferred. Such a measure may be extended, if the causes that motivated it, still exist.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
By MoellerIP Team
National Institute of Industrial Property Resolution
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
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 22 of Annex I (IF-2018-47346817-APN-DAL#INPI) of Resolution 250/2018 establishes that INPI shall digitize all filings made through paper and the proceeding shall continue by electronic means.
Forms completed through the webpage
When filings of new trademarks, renewals, and oppositions are entered through the webpage, users shall complete all information required.
Unlike paper forms which are filed personally in the Organism, forms completed through the webpage have different validations which prevent users from further completing the document when any essential, field has been left in blank reducing thus, the formal observations in this type of proceedings.
In addition, the display of new trademark applications, trademark renewals and oppositions filed by means of the webpage, are almost immediate.
In light of the above, it is necessary to implement a system allowing the electronic upload of the forms corresponding to new trademark applications, renewals and oppositions after which the user may choose to file them electronically or else, download and print them for filing personally at INPI.
The data entry through the webpage shall optimize INPI´s internal procedures and will expedite and improve the terms for the completion and granting of the rights claimed in each of the filings.
Registration of a new trademark
Those who wish to obtain the registration of a new trademark, must indicate the products and/or services to be distinguished by the corresponding sign.
By means of Disposition No. 3/61 of former National Organism of Industrial Property , in those cases where the applicant intends to distinguish all the articles of a class , it is not necessary to list all of them in the application, but simply indicate that the application is for all the articles of the class, with the expression “all class”.
Said norm had the aim of speeding up the formal evaluation of the trademark applications since with just mentioning the number of the Nice class plus the phrase “all class”, it was no longer necessary to examine the correct classification of all the products or services detailed in the application, and also control the correct publication of the sign in the Trademarks Bulletin.
Though the said aim was extremely useful in the past, nowadays there are numerous free tools available online which permit the easy classification of products and services pursuant to Nice Agreement.
In the last years said tools, in particular “TMclass” handled by the EUIPO, have been consulted and used permanently by the National Department of Trademarks and also, quoted as reference at the moment of objecting some incorrect classification of a product or service of a determined class
Furthermore, Trademark applicants have also started using these tools at the moment of applying for a trademark or to reply to some objection
In light of the foregoing it turns out to be appropriate to promote the use of these modern classification tools by the users of industrial property services in order to facilitate the selection of products or services through lists of terms internationally harmonized
The advantage of the system of individual selection of products and services facilitates competition in the market, since it prevents a TM applicant from protecting all the products or services contained within a class, which in many cases shall not be used in commerce
The data electronic upload system plus the implementation of this harmonized term tools (Tmclass) make the proceeding simpler for the user and optimize human and material resources in the institute, expediting in this way, the proceeding itself.
Although INPI promotes the use of tools that are helpful for the classification and considering there is no list contemplating the universality of all existing products and services, use of this tool is not restrictive for the above purpose, but it will also help the users to include other products or services intended to be protected by their trademarks , in which case INPI will then evaluate them formally by traditional means
Resolution NO.123 of May 23
Resolution No. 123 of May 23, 2019 approved through Annex thereto, the complementary regulations to Decree 242/19
With the aim of promoting the regulatory simplification it is appropriate to incorporate the present regulation within Annex of Resolution 123 of May 23, 2019
The NATIONAL TRADEMARKS OFFICE, DIGITAL AND INFORMATION TECHNOLOGY OFFICE, ADMINISTRATIVE COORDINATION OFFICE and LEGAL AFFAIRS OFFICE have taken the appropriate measuresRead More
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 will work together to achieve shared objectives such as ensuring that the patent systems in both regions offer the best possible services to innovating businesses and inventors in an effective manner in order to benefit the economy and society as a whole.
The Offices will also focus on a number of activities aimed at strengthening capacities in search and examination in emerging technologies fields such as the Internet of Things (IoT) and Industry 4.0, as well as capitalising on EPO work products, tools and standards.
The EPO and INPI have a long-standing history of cooperation. A previous MoU on technical cooperation was signed in Buenos Aires in May 2017, which will be replaced by the most recent MoU on Reinforced Partnership.
Source: www.epo.orgRead More
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:
- Multiclass applications are not allowed. Trademark applications should be filed indicating only one class of the Nice Classification.
- The obligation of filing a Declaration of Use falls only upon trademarks and trademark renewals granted as of January 12, 2013.-
- 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
- Trademark renewal applications may be filed as from 6 months prior to the expiration date and up to 6 additional months from said date.
- The notification system of our TM Office remains the same until further regulation is issued regarding electronic notifications.
- 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 duly paid.
Important information regarding Declaration of Use in Argentina
Filing of Declaration of Use mandatory. Term
The obligation of filing a Declaration of Use (DOU) falls only upon trademarks and trademark renewals granted as of January 12, 2013.- The DOU should be filed as from the 5th anniversary of validity up until the 6th anniversary of validity, together with the payment of the corresponding fee.
Grace period for filing Declaration of Use
A grace period of up to January 12, 2020 is stablished to comply with the submission of the DOU for trademarks and trademark renewals granted between January 12, 2013 and January 12, 2014.-
If the DOU is not submitted in due time, it could be later on filed provided that an additional fee is paid or each year of delay.
Proof of use
The submission of proof of use is not required. Filing of the DOU, executed by Moeller IP in representation of their clients, is sufficient.
Use of marks
The mark that was not used in the first 5 years becomes vulnerable to cancellation due to lack of use. However, the mark would not be lost unless the cancellation is been declared at the request of a third party. The subsequent use regularizes the use situation of the mark.
If the mark is used only for some products in the class, the products that were not used would be vulnerable due to lack of use. However, this would not affect the validity of the registration for all the products it protects unless there is a cancellation request filed by a third party.
If the mark is used for products or services in other classes of the Nice Classification, this use would suffice to preserve the validity of a registration provided that said products or services are related to the class in question. The same goes in case the mark is used to designate activities related to the products or services protected by the registration.
We hope this information is clarifying and Moeller’s team remains available for any information or clarifications you may need. If you have any questions please reach out to us via firstname.lastname@example.org
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
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, so that the applicants are granted all the corresponding registration with higher celerity, efficiency and quality and especially within the field of patents of inventions and utility models, being aware that the simplification of processes enhances competitiveness and has a strong impact in the saving of fees and costs to the applicant.
That, within the frame of the proposed actions, the creation of a program of Priority Patent Examination (PEP) is relevant, when the first regular application of patent is performed in Argentina.
That the Priority Patent Examination (PEP) will result in a proceeding rule to early access to a substantial examination, subject to the meeting with certain conditions, but that this does not imply any change to substantial rules of current ruling on this matter.
That the NATIONAL PATENT ADMINISTRATION and the DIRECTION OF LEGAL AFFAIRS have intervened, as applicable.
That this document is issued pursuant to the authority conferred by Article 92 item k) of Law N° 24,481, as amended by Law N° 27,444.
For this reason,
THE PRESIDENT OF THE NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY DECIDES:
ARTICLE 1°.- To create, within the frame of the National Patent Administration (ANP) the program of Priority Patent Examination (PEP).
ARTICLE 2°.- The program will be applicable to those patent application that meet the following conditions:
a) the first regular filing of patent of invention application has been performed in Argentina;
b) the application is published in the patent bulletin of this Institute;
c) the third party objection period is expired,
d) the substantial examination fee has been paid;
e) the corresponding substantial examination has not been performed;
f) no other accelerated proceeding has been required for the same application.
ARTICLE 3°.- The applicant who wants to apply to the PEP should complete the form attached as annex IF N° IF- 2019-39703985-APN-INPI#MPYT to this resolution and at the same time the following should be submitted:
a) a national and international search report issued by the Direction of Technological Information and Documentation of INPI;
b) an affidavit of not having filed the invention object of the PEP program in another patent office before;
c) in the case the applicant is a small and medium sized firm, the proof certificate therefor; and
d) the payment of the fee for the application of the present priority examination.
ARTICLE 4°.- After the requirements of the previous articles are met, the patent office will decide on suitability within SIXTY (60) running dates, as from the request date.
ARTICLE 5°.- The present program will extend for a term of three (3) years, from the enforcement of this resolution, to be extended for equal and successive periods.
ARTICLE 6°.- The present resolution will be in force after THIRTY (30) days from the date it is published in the Official Bulletin.
ARTÍCULO 7°.- Be this registered, notified and sent to the National Direction of Official Registration for publishing in the Official Bulletin for the term of (1) day, and after being met, be it published in the Patent Bulletin, with a copy in the notification board, on the web of INPI and then be it filed.
Source: www.boletinoficial.gov.arRead More
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 mark will have a document proving his right to special protection. The classification can be challenged at the request of third parties with “legitimate interest” that require the Inpi an examination of the classification substandard.
“The current legislation is silent on the process of recognizing a brand as being highly reputed,” said the rapporteur of the project, former senator Flexa Ribeiro (PSDB-PA), in his opinion.
At the Commission on Science, Technology, Innovation, Communication and Information Technology (CCT), the project has been granted a mandate that the recognition of the high reputation be valid for 10 years, and that the renewal application be justify.
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 is the expansion of the technological fields accepted in the program: patent applications related to information technology will be now accepted, as well as patent applications in the oil and gas industry.
- PPH INPI-JPO: On April 1, 2017, a two-year or 200 application PPH pilot program started between the INPI and the Japan Patent Office (JPO). The INPI only accepts PPH applications concerning the following technical fields: information technology and machinery, mainly for automobile-related technologies.
- PPH PROSUR: On October 1, 2016, a PPH pilot program started between the Argentinian, Brazilian, Chilean, Colombian, Paraguayan, Peruvian and Uruguayan PTOs, all members of the regional collaborative project on Industrial Property PROSUR. This program has no maximum number of requests and it is not limited to any technical field.
On July 7, 2017, Costa Rica became a PROSUR member (together with Panama and the Dominican Republic), and in September 2017, a PPH agreement signed between the Costa Rican PTO and its PROSUR counterparts entered into force.
The Memorandum of Understanding (MoU) signed between the PROSUR members to implement the PPH contained a declaration by the Brazilian PTO stating that the fulfillment of the program in Brazil would be subjected to the approval by the corresponding Ministry. On December 2016, Brazil received favorable authorization to implement the PPH program, which finally started on July 1, 2017.
The MoU also included a declaration by the Brazilian PTO stating that only patent applications with first filing in a PROSUR country member or patent applications filed in any PROSUR country member as PCT Receiving Office would be eligible in Brazil.
- PPH INPI-EPO: On December 1, 2017, a PPH pilot program started between the INPI and the European Patent Office (EPO). The pilot program will run for a period of two years, or until reaching 600 applications. The INPI only accepts PPH applications concerning the following technical fields: chemistry and medical technology, except drugs.
- PPH INPI-SIPO: On February 1, 2018, a PPH pilot program started between the INPI and the State Intellectual Property Office People’s Republic of China (SIPO). The pilot program will run for two years, or until reaching 200 applications. In theory, only 20 of these applications may be accelerated based on the first examination of the SIPO. The INPI only accepts PPH applications concerning the following technical fields: information technology, packages, measuring technology or chemistry, except drugs.
- PPH INPI-UKIPO: On August 1, 2018, a PPH pilot program started between the INPI and the United Kingdom Intellectual Property Office (UKIPO). The pilot program will initially run for two years, or until reaching 200 applications. Each office will accept only 100 requests to the PPH Program per year. In this PPH program, INPI only accepts PPH applications concerning the following technical fields: Biotechnology (except drugs), electric machines and devices, audiovisual technology, telecommunications, digital communication, basic communication processes, computer technology, IT management and semiconductors.
- PPH INPI-DKPTO: On April 18, 2018, the INPI and the Danish Patent and Trademark Office (DKPTO) signed a MoU to start a PPH Program on September 1, 2018. The pilot program will initially run for two years, or until reaching 200 applications. Each office will accept only 100 requests to the PPH Program per year. It is still under negotiation whether or not the program will be limited to patent applications in specific technological fields.
The INPI further intends to enter into new PPH agreements this year with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (IMPI), as indicated in its 2018 action plan.
A Brazilian patent application has to comply with the following requirements to enter a PPH pilot program:
- It must have been filed first with the INPI or the other participating office.
- It must have been published or a request for early publication must have been filed (in the case of PCT applications, the entry into national phase must have been published).
- The substantive examination must have been requested.
- The substantive examination cannot have started.
- The examination proceedings must not be suspended in order to comply with a requirement by the INPI.
- All annuity fee payments must be up to date.
- Another request for fast-track examination must have not been granted and published.
- It must not be a divisional application, with the exception of those divisional applications resulting from the direct division of the original filing and derived from a lack of unity objection raised by the Office of First Examination.
- It must not be subjected to a lawsuit.
According to information published by the INPI, the average time to assess the eligibility of requests to participate in the program is 70 days, the average time from the PPH request until the first examination is issued is 160 days, and until a decision is made, 220 days.
Seventy-two requests were filed to participate in the Phase I of the PPH program with the USPTO, from which 45 already have been granted a patent. Up until August 7, 2018, 70 requests were filed to participate in the PPH program with the JPO, from which 26 already have been granted a patent.
Regarding the PPH INPI-EPO, only two patents have already been granted from the 25 requests filed to enter the program up until August 7, 2018.
The PPH INPI-SIPO program has received the most requests: 146 up until August 7, 2018, from which 10 patents already have been granted. In contrast, the PPH between the INPI and PROSUR has only received 3 requests, and no patent has been granted yet.
Despite a positive impact, the current PPH programs in Brazil have some limitations. In all programs, it is required that the patent application has been firstly filed either with the INPI or with the corresponding participating office. Additionally, except in the PPH INPI-PROSUR, only a limited number of requests are being accepted in each program and only for patent applications related to specific technical fields.
Remarkably, pharmaceutical patent applications, for which the average decision time at the INPI is currently 13 years, are excluded from eligibility in all PPH programs except in the INPI-PROSUR.
Source: http://www.inpi.gov.brRead More