In a controversial resolution, the Argentine IP office, INPI, has established limitations on the filing of divisional patent applications, arguing that divisional applications increase the number of applications to be examined, therefore increasing the backlog of pending applications to be resolved.
On June 30, INPI enacted Resolution INPI P-147, which was published on July 7, and became effective from July 16. This resolution restricts the possibility to file divisional patent applications.
The resolution establishes that applicants will be allowed to file voluntary divisionals of patent applications during prosecution until the examination report (or substantive examination office action) is notified.
It furthers establishes that after the examiner starts performing the examination, if an application lacks invention unity, or is a complex application, the applicant will be summoned to file divisional applications within 30 working days, or to consider the application abandoned.
This seriously contradicts what is established by Argentina's Patent Law regulation. The term to answer an examination report (substantive examination office action) is 60 days, plus three extensions of 30 days each, totalling 150 days.
But with the new resolution from INPI, an applicant could be summoned to answer a lack of unity objection in 30 working days, which is a much shorter term than that established in the Patent Law.
After the examination report is performed by INPI and notified to the applicant, it will not be possible to file voluntary divisional applications, unless those divisional applications are requested by the examiner due to the lack of unity of the application.
Additionally, resolution 147 also restricts the possibility to file divisional applications during the appeal process of an application that was rejected. Formerly, in the event a patent application was rejected, it was possible to file a divisional application provided the applicant filed an appeal in order to overcome the rejecting decision. The feasibility to file such a divisional was viable during all the term the appeal procedure was pending. However, no decision was issued regarding the divisional application until the appeal was definitively resolved.
But from the effective date of Resolution P-147, this alternative will not be available anymore, since it expressly requires that divisional applications should be filed before the "examination report" is notified to applicant, and during "prosecution" of the main application. In other words, before the main application is resolved by INPI.
INPI officers said that Resolution 147 will apply not only to new patent applications to be filed after the effective date, but to all pending patent applications being prosecuted before the Office.
Moreover, article 17 of the implementing decree of Patent Law 24.281 establishes that divisional applications can be filed at any time before the granting of the application. Thus, by resolution 147, INPI would be modifying the patent regulation established by a higher degree regulation.
We understand that the legitimacy of this resolution will indeed be challenged because it imposes restrictions that go further than those that were set by the Patent Law or its implementing decree. Additionally, the Office intends to extend the effects of this resolution to all pending applications, even those filed before the resolution was enacted thus seriously affecting the applicant's right to have its patent application prosecuted with a specific set of rules in force at the time the application was filed.
We believe that the effect of this resolution will be contrary to the aims sought by INPI of reducing the backlog of pending patent applications and expediting their examination. By restricting the ability to file divisional applications after the examination report, it is expected that applicants will now file more divisionals preventively before examination starts, in order to preserve a right that they had before these new rules were enacted.
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