Patent Prosecution Highway (PPH) in Argentina

The limits of Patentability. Reasons why you wouldn´t want to speed up the process?
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The Argentinean National Institute of Industrial Property (INPI) has recently passed a new Resolution by means of which applicants will be able to accelerate the examination of their patent applications.

New resolution, (56/2016), based on prior Resolutions (P-263/03 and P-125/09), instructs the National Patent Administration (ANP) to consider as done the international search of antecedents when the priority invoked under the terms of section 4 A1 of the Paris Convention has been granted by a foreign Office having similar patentability standards or when no priority has been invoked but proof is provided that a patent has been granted for the same invention after the date of filing the application in Argentina.

In order to apply this resolution, the scope of patent claims should be equivalent to the claims set by the foreign offices that granted the patent.

The main advantage is that applicants, prior in-depth examination, can voluntarily request the application of this regulation adjusting the scope of claims to the ones allowable by a foreign office, such documents should be duly translated into Spanish. According to the resolution, the Patent Office should issue a decision within 60 days after the request is filed, though in real life it may take a little longer.

Additionally, it is important to mention that as previous resolutions the new one does not modify the current patentability standards for the National Patent Administration nor repeal the validity of the Joint Resolutions made by the Argentine Trademark Office, the Ministry of Industry and the Ministry of Health.

That is why, in order to take advantage of this new resolution, the claims of the local patent application should not fall within the exclusions from patentability established by Argentine Law and or the Joint Resolutions.

Notwithstanding, for those applications that include the exclusions of patentability imposed by prior Joint Resolutions (See our previous newsletters), we should bear in mind that, since such claims are still in force, it would not seem a smart move to accelerate the process, since we could have the application denied within sixty days, when it is really likely that said Joint Resolutions will be revoked soon, considering the International and the professional bodies pressure against the same.

In these cases, we understand that the course of time could be an ally to obtain the granting of the application.