Legal “twist” of article 5
Due to the fact that Argentina is one of the few Latin American countries that are not party to the PCT and that it is nonetheless considered an interesting market, during the last 15 years it has been usual to receive the clients request to enter in national phases of international patent applications in Argentina.
When receiving this request, which usually happens near to the 30 months deadline, the international application has already been published, so that novelty of an equivalent application filed in Argentina has been seriously questioned.
So far our clients have been advised to file this kind of applications under the provisions of Art. 5 of Patent Act 24481, which states:
âDisclosure of an invention will not affect its novelty if the inventor or his successor has made it known through any kind of communication or display at a national or international exhibition within one (1) year prior to the corresponding patent application filing date, or prior to the recognized priority date, as the case may be. A patent application for such invention shall include all the documents evidencing the circumstances of said disclosure, in the manner provided by the regulationsâ
It has been the understanding of many Argentine patent agents that the publication of a patent application carried out by a foreign patent office, was included in the provisions of Art. 5. It must be said that the understanding of the Argentine PTO is fairly different and even though this kind of applications were accepted, they were automatically rejected during substantial examination because of lack of novelty.
The next possible step for applicant was a legal action against the Argentine PTO trying to obtain a favorable court decision, which would confirm Art. 5 covers applications filed after a member of its patent family had already been published.
Patent application No. P97 01 001003, in the name of SociÃ©tÃ© Conseils de Recherches et dâApplications (SCRAS), was filed under the provisions of Art. 5 and was rejected by the Argentine PTO. These recent court decisions in first and in second instance have been made public.
The judge who ruled in first instance stated that the PTO had to grant the application. A decision that went a bit too far because the judge should have ordered the PTO to go on examining the application. The Argentine PTO appealed this decision and a few weeks ago the Chamber of Appeals, with the signature of three judges, stated the following:
The case must be analyzed under the light of Art. 2, 7 and 27 of TRIPâs, Art. 11 of the Paris Convention and Art. 4 and 5 of the Argentine Patent Act 24481 and its regulation.
The chamber reminded that TRIPâs compels the party states to accomplish and respect Art. 1 to Art. 12 and Art. 19 of the Paris Convention. One of the most important regulations of the Paris Convention is contained in Art. 4, according to which:
âAny person who has duly filed an application for a patent in one of the countries of the Union, shall enjoy, for the purpose of filing in the other countries, a right of priority during a period of one year. â
Art. 11.1 of the Convention states that the countries of the Union shall grant temporary protection to patentable inventions in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them with the proviso that said temporary protection shall not extend the periods provided by Art. 4, this means, twelve months for patents.
The case under discussion, published under No. WO 96/07398 corresponds to PCT patent application IB95/00793 filed August 31, 1995. The international application claims two priorities; one dated 2.09.1994, the other dated 8.03.1995 and was published on 14.03.1996.
Argentina is compelled to honor and apply Art. 4 and Art. 11 of the Paris Convention and the resulting system does not allow adding the benefits of the priority right to the benefits of the grace period, which would result in an exception to the novelty requirement as it would mean dating back the relevant date to set the state of the art for a term that would be of more than twelve months.
The Chamber of Appeals decided that the decision of the Argentine PTO rejecting the patent application on the basis of lack of novelty is correct and confirmed the rejection.
The court decision can be appealed, if so, the case would be decided by the Supreme Court, which would be the final instance. We do not know so far if an appeal will be filed.
It is important to take into consideration that, decisions taken by the Chamber of Appeals and decisions taken by the Supreme Court are not binding, but are in fact followed by other judges.