1 Legal framework
1.1 What are the sources of patent law in your jurisdiction?
- The Paris Convention, regulated by Law 17.011;
- The Agreement on Trade-Related Aspects of Intellectual Property Rights, regulated by Law 24.425;
- Article 17 of the Argentine National Constitution;
- The Patent Law (24.481), as further amended by Laws 24.572, 25.859 and 27.444;
- Patent Law Ruling Decree 260/96, as further amended by Decree 403/19;
- Guidelines issued by the National Industrial Property Institute (INPI);
- The Administrative Proceedings National Law (19.549) and its Ruling Decree 1759/72; and
- The resolutions, dispositions and internal memoranda of INPI.
1.2 Who can register a patent?
Any natural or legal person, whether local or foreign, that has its actual or established address in the country is entitled to obtain an industrial property certificate from INPI. The right to a patent is held by the inventor or its successors, which are also entitled to assign or transfer the patent through any lawful means and to enter into licence agreements.
2.1 What rights are obtained when a patent is registered?
A granted patent confers the following exclusive rights on the holder:
- where the subject matter of the patent is a product, the right to prevent third parties from manufacturing, using, offering for sale, selling or importing the patented product without its consent; and
- where the subject matter of the patent is a process, the right to prevent third parties from using the patented process without its consent, and from using, offering for sale, selling or importing the product directly obtained by means of the claimed process.
2.2 How can a patent owner enforce its rights?
If all attempts at negotiation between the holder of a granted patent and the alleged infringer fail, a legal action may be filed with the Civil and Commercial Federal Court. Judicial process will determine whether an infringement has taken place, based on input from different experts appointed by all parties.
2.3 For how long are patents enforceable?
Patents are enforceable from the date of grant until the expiration date, which is 20 years from the filing date.
3 Obtaining a patent
3.1 Which governing body controls the registration procedure?
The National Industrial Property Institute (INPI).
3.2 What is the cost of registration?
The official fees for filing a patent application are as follows:
- Filing charge:
- Up to 10 claims: $96.
- For each additional claim:$6.40.
- Filing power of attorney and ratifying the application: $8.
- Requesting examination:
- Up to 10 claims: $160.
- For each additional claim: $6.40.
- Replying to an official action (minimum): $8.
- First to third (per year): $48.
- Fourth to sixth (per year): $80.
- Seventh to twentieth (per year): $192.
All costs are approximate, based on an exchange rate of $1 = ARS 62.50.
3.3 What are the grounds to reject a patent application?
The basic grounds are lack of novelty, lack of inventive step or lack of industrial application. A patent application can also be rejected if it is contrary to any prescription of the law.
The rejection may be based on the patentability exclusions. In this regard, the following are not considered inventions under the Patent Law:
- discoveries, scientific theories and mathematical methods;
- literary, artistic and aesthetic works, as well as scientific works;
- plans, rules and methods for the exercise of intellectual activities, games or economic-commercial activities, as well as software programs;
- forms of presentation of information;
- surgical, therapeutic or diagnostic treatments applicable to the human body or animals;
- juxtapositions of known inventions, mixtures of known products, or variations in shape, size or materials, except where they are combined or merged in such a way that they cannot function separately, or where their main qualities and functions are modified to obtain a non-obvious industrial result for a technician skilled in the art; and
- any kind of living matter and substances that pre-exist in nature.
In addition, the following are not patentable inventions:
- any inventions whose exploitation in Argentina must be prohibited to protect public order or the morality, health or life of human beings or animals, and to preserve vegetation or avoid serious damage to the environment; or
- any biologic or genetic material, whether existing in nature or replicated, and any biological processes implicit in animal, plant or human reproduction, including genetic processes relating to any material capable of conducting its own duplication under normal and free conditions, as occurs in nature.
Furthermore, an application may be rejected for non-compliance with certain procedural matters.
Please also see question 3.5.
3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?
There are three options to accelerate the examination of patent applications:
- INPI Resolution P-56/2016 may be invoked to adapt, either voluntarily or as per the examiner's suggestion, the claims to those of an equivalent patent that has been granted in a foreign country with a substantive examination procedure and same patentability standards as Argentina, provided that the following criteria are met;
- The claimed object is eligible for protection under the Patent Law;
- No local antecedents have been found;
- The application satisfies all formal requirements; and
- The scope of the adapted claims does not surpass the scope of the claims in the foreign patent.
- In this scenario, the international search of antecedents will be avoided.
- The application may be filed via the Patent Prosecution Highway in the case of countries that are party to such agreements. Argentina has already signed with Japan, China, the United States, Denmark, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Uruguay, Costa Rica, El Salvador, Nicaragua, Panama and the Dominican Republic.
- A new programme launched in 2019, called the Priority Patent Examination, benefits those that file their first patent application in Argentina, with substantive examination taking place within 60 days of the date of filing of the corresponding form, where the following criteria are met:
- The first deposit is filed in Argentina;
- The application has already been published in the official bulletin of INPI;
- the timeframe for third-party observation has expired;
- The applicant has paid the fee for substantive examination, which must not have started yet; and
- No other fast track programme has been previously requested for the same application.
3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
Yes. Certain types of claims are inadmissible due to an incorrect interpretation of the law on use claims, which are rejected by INPI even though nothing in the Patent Law or in the Agreement on Trade-Related Aspects of Intellectual Property Rights states that they are excluded from protection.
Some other claims are not admissible based on a joint resolution signed by INPI, the former Ministry of Industry and the Ministry of Health. This resolution arbitrarily limits the scope of chemical-pharmaceutical inventions by not allowing polymorphs, pseudo-polymorphs, enantiomers, Markush formulas, selection patents, salts, esters and other derivatives of known substances, active metabolites, prodrugs, formulations and compositions, combination of previously known active principles, doses, second medical uses and analogue processes.
The INPI guidelines on patentability added some definitions that partly limit the protection of biotechnological inventions such as modified nucleotide or amino acid sequences, genetically modified organisms and genetic transformation events.
3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
There are no such mechanisms in Argentina.
3.7 What subject matter is patent eligible?
Any invention of a product or of a process is patentable, provided that it is new, involves an inventive step and has industrial application. Any human creation that enables the transformation of matter or energy for human use that fulfils such characteristics shall be considered an invention.
3.8 If the patent office does not grant a patent, is an appeal available and to whom?
One option is to file a request for reconsideration, which is regulated under the Administrative Proceedings National Law. This appeal must be filed within 10 business days of notification of rejection and is filed with the same authority that issued the decision, which will also decide on the outcome.
If it is rejected, then the appeal automatically proceeds to second instance as a hierarchical appeal which is decided by the president of INPI; additional grounds may be filed during this proceeding. However, there is no need to file a request for reconsideration first; a hierarchical appeal may be filed directly upon rejection of the patent application, within 15 business days of notification of the decision.
Once the rejection is ratified by the hierarchical appeal, a legal action may be filed at the civil and commercial federal courts.
The other option is to file an administrative appeal, which is regulated under the Patent National Law. This appeal must be filed within 30 business days of notification of the rejection before the president of INPI, who will also decide on the outcome. There is no second instance for this appeal; hence, following ratification of the denial, the applicant may file a legal action with the courts.
4 Validity/post-grant review and/or opposition procedures
4.1 Where can the validity of an issued patent be challenged?
The validity of a patent may be challenged at the civil and commercial federal courts.
4.2 How can the validity of an issued patent be challenged?
By filing a legal action setting out the grounds on which the patent should have not been granted.
4.3 What are the grounds to invalidate an issued patent?
The grounds for invalidation concern breach of the requirements for grant of a patent. In other words, the grounds to invalidate an issued patent are the same as those applicable to reject a patent application.
4.4 What is the evidentiary standard to invalidate an issued patent?
Any kind of pertinent evidence will be admitted to prove that the patent should not have been granted, and that it is null.
4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
There are no such mechanisms. The only possible way to challenge the validity of an issued patent is to file a legal action with the courts.
4.6 Who can oppose a granted patent?
There are no oppositions to granted patents in Argentina.
4.7 What are the timing requirements for filing an opposition or post-grant review petition?
4.8 What are the grounds to file an opposition?
There are no oppositions to granted patents in Argentina. However, the Patent Law provides that in the 60 calendar days following publication of a patent application, any interested party may file observations on said patent application setting out why the patent should not be granted.
4.9 What are the possible outcomes when an opposition is filed?
Any observations will be analysed by the examiner and may eventually be taken into account for the rejection of the application.
4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
The examiner will analyse the observations as another antecedent.
4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?
5 Patent enforceability
5.1 What makes a patent unenforceable?
All granted patents are enforceable. However, if they are declared null during the course of legal action commenced to enforce them, they will no longer be enforceable.
A patent may be declared null and thus unenforceable for several reasons, including if the invention lacks novelty, inventive step or industrial application. It will also be declared null if it covers non-patentable subject matter or if it was granted in violation of the procedural rules.
5.2 What are the inequitable conduct standards?
There are no inequitable conduct standards set out in the law. However, if information is withheld or the National Industrial Property Institute is misled, the patent may subsequently be declared null.
5.3 What duty of candour is required of the patent office?
No such duty applies. However, all officers and employees are obliged to act in good faith.
6 Patent infringement
6.1 What Constitutes Patent Infringement?
Defrauding an inventor's right is a criminal offence. This also applies where unauthorised third parties:
- manufacture or make others manufacture one or more objects in violation of the patent holder's rights; or
- import, sell, offer for sale, market, display or introduce in the territory of Argentina one or more objects in violation of the rights of the holder of a patent or utility model.
6.2 Does your jurisdiction apply the doctrine of equivalents?
Yes, Argentina applies the doctrine of equivalents.
6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?
Only if the goods are imported into Argentina.
6.4 What are the standards for wilful infringement?
Usually the infringer is asked to cease the illegal activity; if it fails to do so on request, it is considered to be acting in bad faith. The infringer's lack of knowledge of the existence of the patent will not excuse it from infringement or from the obligation to pay damages.
6.5 Which parties can bring an infringement action?
The patent holder and/or its licensee.
6.6 How soon after learning of infringing activity must an infringement action be brought?
There is no term within which an infringement action must be brought if the infringement is ongoing. If it has stopped, then under the statute of limitations an action must be brought within three years of the last act of infringement.
6.7 What are the pleading standards to initiate a suit?
The plaintiff must prove:
- its ownership of a granted patent;
- the existence of an infringement; and
- that the defendant committed the infringement.
6.8 In which venues may a patent infringement action be brought?
In the criminal federal courts. If the action is aimed only at securing the cessation of infringement and/or damages, then the venue is the civil and commercial federal courts.
6.9 What are the jurisdictional requirements for each venue?
The plaintiff can choose between the courts of the place where the infringement has been committed or the place where the infringer has its address. This is applicable only for infringements committed in Argentina and excludes litigation abroad.
6.10 Who is the fact finder in an infringement action?
The plaintiff must explain the facts and the infringement; however, the court will appoint an expert to provide an opinion about the existence of the infringement. The plaintiff must request the appointment of an expert; the defendant can also request this where the plaintiff does not.
6.11 Does the fact finder change based on venue?
6.12 What are the steps leading up to a trial?
The commencement of a criminal action before the court.
6.13 What remedies are available for patent infringement?
A permanent injunction, damages, a temporary injunction, a term of imprisonment from six months to three years and a fine.
6.14 Is an appeal available and what are the grounds to appeal?
Yes. The basic ground is that the first-instance decision has caused irreparable harm to the losing party. On appeal, the appellant must explain why the decision should be revoked.
7.1 Is discovery available during litigation?
No, in Argentina this is not established as a pre-trial procedure in a lawsuit.
7.2 What kinds of discovery are available?
7.3 Are there any limitations to the amount of discovery allowed?
8 Claim construction
8.1 When during a patent infringement action are claim terms defined by the tribunal?
In the decision rendered in the case.
8.2 What is the legal standard used to define claim terms?
The claims must be exactly described, in addition to the facts of the case and the law on which the claim is based.
8.3 What evidence does the tribunal consider in defining claim terms?
The court does not define the claim terms. The court will either grant what is sought by the plaintiff, in whole or in part, or reject its request.
9.1 Are injunctions available?
9.2 What is the standard to obtain an injunction?
A permanent injunction requires a showing that the patent has been infringed.
9.3 Are damages available?
9.4 What types of damages are available?
Losses and infringer's profits.
9.5 What is the standard to obtain certain types of injunctions?
In order to obtain a temporary injunction, the following requirements must be met:
- There is a reasonable possibility that the patent will be declared valid even if the defendant launches nullity proceedings;
- Any delay in granting such measures would cause irreparable damage to the patent holder;
- The damage that might be caused to the patent holder exceeds that which might be suffered by the alleged infringer if it emerges that the measure was erroneously granted; and
- There is a reasonable possibility that the patent is being infringed.
9.6 Is it possible to increase or multiply damages due to a party's actions?
9.7 Are sanctions available?
In criminal actions, a fine may be imposed. There are no punitive damages in civil or commercial actions.
9.8 What kinds of sanctions are available?
See question 9.7.
9.9 Can a party obtain attorneys' fees?
The court will determine the amount that the losing party must pay to the lawyers of the winning party, in proportion to whether the win is total or partial. In case of doubt, the court may order that each party must bear the costs of its own lawyers. The costs ordered by the court will be a percentage of the sum awarded. In some cases, the importance of the claim and the work undertaken by the lawyers will be considered in this regard.
9.10 What is the standard to obtain attorneys' fees?
Winning the case.
10.1 What patent rights can a party obtain through a licence?
The rights to manufacture, import, sell and sub-license the invention.
10.2 What limits can a patent owner impose on a licence?
Any restrictions that:
- impair the licensee's production, trading or technological development;
- limit its competence or result in other unfair conduct, such as exclusive retrocession clauses;
- prevent objections against validity;
- impose mandatory joint licences; or
- constitute any other act specified in the Competition Law (22.262) or any other statute which may modify or replace the same.
11.1 Are there any limits on patent protection due to antitrust laws?
See question 10.2. A patent right cannot be exercised abusively, in violation of the antitrust law.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.