The Argentine government has issued a decree that includes intellectual property related provisions, as part of its efforts to simplify administrative proceedings.
Decree No. 27/2018 includes changes that will affect trade marks, patents and designs. It is effective now but many of its provisions will need transitory or implementing provisions.
According to an alert from Marval O'Farrell & Mairal, the Argentine patent and trade mark office (INPI) will hold a meeting with practitioners’ associations on January 17 to discuss the new provisions.
Trade marks
The biggest change is that oppositions will need to be settled by the applicant and the opponent within three months from notice, as opposed to within one year now. If they do not reach an agreement, INPI will issue a ruling on the merit of the opposition, although the procedure for doing this is not yet clear. This would bring Argentina in line with many other countries and mean courts are only used on appeal.
INPI will also now be able to decide on the cancellation on the basis of absolute grounds and lapsing of a trade mark registration. Like its oppositions rulings, these decisions may be appealed to the Federal Court of Appeals.
Marval O'Farrell & Mairal described another change: “As regards lapsing, a registration shall not lapse if the mark is used in connection with the goods and services it protects or in connection with related goods or services, even if they belong to a different class. Currently, use of a mark does not require to be on related products or services in order to maintain a trademark registration.”
A sworn declaration of use of a mark will be required to maintain validity in the fifth or sixth year or registration.
Patents
The main patent changes shorten the timelines for submitting documents. The deadline for filing a request of examination has been reduced to 18 months from 36 months from the filing of an application.
Under the previous rules, a certificate of priority rights, and its translation, had to be filed within 90 days. Now, this will only have to be submitted if an examiner asks for it in the course of substantive examination. Also, the power of attorney will only need to be submitted if INPI requests it, unlike previously when it was required to be filed with the application.
Designs
Multiple applications will now be allowed on a single filing, up to 20 models or designs.
The requirement for fling formal drawings has been removed, and it will now be possible to file photographs or electronic reproductions. Deferred publication of the registered model will also allowed, up to a maximum of six months from the registration date.
Marval O'Farrell & Mairal added: “And, more importantly, renewal is also greatly facilitated by the decree, in that it provides that it is to be carried out within the last six months of the design’s lifetime (and not within 6 and 9 months prior to the expiration, as in the current law). The decree also grants a six-month grace term from the expiration date to reinstate the expired design (similarly not provided for in the current law).”
