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News article23 November 2021

The Main challenges when applying for a patent in Argentina for EU SMEs

Argentina

Verónica Canton

Argentinian Legal Consultant

 

EU SMEs are an important engine for the economy. According to the research carried out by EUIPO: "Intellectual Property Scoreboard 2019", small and medium-sized companies in Europe provide 57% of added value to this continent and also generate 66% of jobs in the European Union.

However, these entities have a difficulty: they do not last more than 5 years. Hence, the incentive to innovation is one of the solutions to this serious problem. Innovation is key for SMEs: it allows companies to achieve stability and economic growth, essential for its success when penetrating new markets.

Intellectual property gives to those who invest their time, effort and money in innovating, a mechanism to protect that innovation and to benefit from it.

Therefore, if you are an EU SME trying to internationalise to Argentina, we propose to you in this article an analysis of the Argentinian Patent system. Knowing the advantages and challenges when applying for a patent in Argentina will be very useful to you, if you wish to embark on a new path towards this Latin American country.

The scope of patent protection in Argentina

Patents and utility models in Argentina are regulated by Law 24.481. The Patent Law grants a term of protection of twenty years from the date of registration of each patent. Utility models are granted for a period of 10 years.

According to Argentine legislation, an invention may be protected by patent if it has the following conditions: novelty, inventive step and industrial application. However, the law establishes that if the exploitation of an invention harms public order, morality, health or life of persons, the patent will not be granted, even if such invention complies with the three aforementioned requirements. The totality of the biological and genetic material existing in nature or its replica are not patentable either.

In addition, Article 6, specifically states what is not considered an invention and therefore cannot be patented: computer programs, discoveries, all kinds of living organism and substances pre-existing in nature, etc.

The National Institute of Industrial Property (INPI) is the state agency in charge of the protection and registration of invention patents and utility models, trademarks and designations, industrial models and designs, and technology transfer. The application for a patent must be submitted to this agency.

What are the advantages that EU SMEs have when filing a patent application in the Argentine System?

Grace period

The grace period, stipulated in Article 5 of the Patent Law, allows the inventor to apply for a patent even if there has been a prior disclosure.  It is an exception to the novelty requirement. Certain conditions must be met: the disclosure must be made by the inventor himself or his successors in title, within the year prior to the patent application and by any means of communication, or have been exhibited at a national or international exhibition.

Patent fees

Another of the virtues of the Argentine system are the fees corresponding to patent proceedings. Submitting a patent application costs 6000 argentine pesos (52 euros) with up to ten claims.

From patents to utility models

You can benefit from utility models. It is an alternative form of protection to the patent, which requires only two patentability requirements: novelty and industrial application.  Therefore, the inventor can obtain protection for his invention when it does not meet the inventive step requirement, which is an essential requirement for obtaining a patent, and it is generally used to protect innovations introduced to tools, work instruments or objects that serve for practical uses.

INPI tech transfer department

In addition, another benefit is that INPI has a department specialized in Technology Transfer, which provides assistance and advice for consultations related to the registration of technology transfer contracts, and also consultations related to procedures for the transfer of substantive rights of trademarks, patents and utility models and industrial models and designs. Check INPI website, for TT issues: https://www.argentina.gob.ar/inpi/transferencia

Online search

INPI provides users with a free online database: Argentine Patent search tool. Thanks to this tool, you can either make a follow-up to the patent process of your application, or make use of the patent finder. Thanks to the patent finder you can make a search of the state of the art, or you can find out what your competitors may be up to.

What are the difficulties faced by EU SMEs when applying for a patent?   

Registration in Argentina as a non-PCT member

For starters, Argentina is not a member of the Patent Cooperation Treaty (PCT). Therefore, you cannot benefit from the advantages established by such international agreement. One of the most significant benefits is that it facilitates the processing of applications when such protection is sought in several countries, since a single application produces the same effects as if such application had been filed in each of the countries that are part of the Treaty. This is a single procedure that facilitates the filing of a patent application. It is not a system that unifies the granting of patents, since the grant will be granted by each country. 

If your company has already filed a PCT application, bear in mind that according to the Paris Convention, you can still apply within 12 months for a patent in Argentina or any other non-PCT member country.

If the 12-month has already elapsed, it is key whether there has been any publication, or the novelty is harmed. If not, then you can still apply for this patent in Argentina, but do not invoke any priority rights.

Delays in the granting process

Another disadvantage of the Argentinean system is the delays in the processing of patent applications. The procedure for granting a patent lasts approximately 5 to 7 years on average, but it can be accelerated with the payment of the corresponding fee. The procedure for granting a utility model takes approximately 5 years. These delays and restrictions are usually the main reason for applicants to abandon the process. To solve this problem, the Argentine government, through INPI Resolution No. 112/2019, created a new program called: "Priority Patent Examination (PEP)" that allows expediting the patent application process, when the requirements established in the Article 2 of the Patent law.

Pharma patents and plant varieties

Argentine law has restricted the patentability criteria, especially in the chemical-pharmaceutical and biotechnological sectors. Pharmaceutical patents, are regulated by three resolutions: 118/2012, 546/2012 and 107/2012 signed by the INPI. These rules restrict the patentability of various categories of inventions in the pharmaceutical field.

Another characteristic of the Argentine legislation is that plant varieties are not patentable. Intellectual property on seeds is governed by UPOV 1978, an intergovernmental organization created by the International Convention for the Protection of New Varieties of Plants.

Swiss type claims are not accepted

In Argentina, Joint Resolution 118/2012 establishes the guidelines for the examination of Patentability of patent applications on Chemical-Pharmaceutical Inventions. Item # 12 states that: "Claims of use of a product, including a second medical indication (or other medical uses) of known compounds are not admissible. Patent applications for second medical indications (or other medical uses) are equivalent to a method of therapeutic treatment and do not have industrial applicability.”

This rule applies even when the claim is formulated under the “Swiss formula”, that is, “use of x for the manufacture of a drug for the treatment of y or variants thereof”. In certain countries, including New Zealand, the Philippines, and Canada, methods of medical treatment are not patentable either. However "Swiss-type claims" are allowed.

Language

Another drawback for EU SMEs is that all documents pertaining to the patent application procedure must be submitted with their translation into Spanish. This adds an extra cost and time to the process.

To know more about patent protection in Argentina, check out our factsheets: CFS Argentina, IP systems comparative: Argentina vs Europe, Technology transfer in Argentina, IP licensing in Latin America, or even our Case Study on Patent conversion into utility model in Argentina.

Should you have any question, submit your enquiry to our Helpline service. It’s free, offered in English, French, German, Spanish and Portuguese, and we answer you back within 3 working days.

Details

Publication date
23 November 2021