Patents Comparative Guide

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

• The Invention Patent and Utility Model Law (24,481), as amended by Laws 24,572, 25,859 and 27,444;
• Regulatory Decree 260/96 of the Patent Law, as amended by Decree 403/19;
• The resolutions, provisions and internal memoranda of the National Industrial Property Institute);
• The National Law of Administrative Procedures (19,549) and its Regulatory Decree 1759/72;
• Article 17 of the Constitution;
• The Paris Convention, regulated by Law 17,011; and
• The Agreement on Trade-Related Aspects of Intellectual Property Rights, regulated by Law 24,425.

1.2 Who can register a patent?

National or foreign natural and legal persons with a real or constituted address in the country.

The right to the patent belongs to the inventor or their successors, who have the right to assign, transfer and/or license the patent.

2 Rights

2.1 What rights are obtained when a patent is registered?

A patent is an industrial property right granted by the state to its inventor and/or their successors to exercise exclusivity over the creation.

2.2 How can a patent owner enforce its rights?

A patent right enables the patent holder to block third parties, without authorisation, from manufacturing, using, offering, selling or importing:

• the patented product or process; or
• a product obtained from the patented process.

A legal action may be brought before the federal civil and commercial courts in order to enforce the patent rights.

2.3 For how long are patents enforceable?

Patents are valid for 20 years as from the filing date.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

In Argentina, the registration procedure is controlled by the National Industrial Property Institute (INPI). The INPI is in charge of enforcing the laws that protect industrial property rights in the country.

3.2 What is the cost of registration?

The initial official filing fee is ARS 48,000 up to and including 10 claims, with each additional claim costing ARS 3,200.

The official fee for the initiation of substantive examination is ARS 80,000 up to and including 10 claims, with each additional claim costing ARS 3,200.

The official fee for responding to an official action, if any, is (minimum) ARS 4,000.

The official cost of annuities varies as the years progress:

• First to third year: ARS 24,000.
• Fourth to sixth year: ARS 40,000.
• Seventh to 10th year: ARS 96,000.
• Eleventh to 15th years: ARS 144,000.
• Sixteenth to 20th year: ARS 216,000.

3.3 What are the grounds to reject a patent application?

If the patent application does not satisfy the formal and fundamental requirements and these issues cannot be solved by the owner of the patent application, it may be denied automatically.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

There are two procedures, as follows.

Application request (R-INPI Nº P-056/16): In this case, the claims must be adapted, of the applicant's own will or upon the examiner's suggestion, to those of an equivalent patent that has been granted abroad in a country with a substantive examination procedure and the same patentability standards as in Argentina, provided that the following criteria are met:

• The claimed subject matter is susceptible of protection under Argentine patent law;
• No local or foreign antecedents have been found;
• The application complies with all formal requirements; and
• The scope of the adapted claims does not exceed the scope of the claims of the foreign patent.

Request for priority patent examination: In this case, the substantive examination of the application begins within 60 calendar days of filing of the regulated form, provided that it complies with the following requirements:

• The first regular deposit has been made in Argentina;
• The patent has been published in the INPI Bulletin of Patents;
• The period for third-party observations has elapsed;
• The substantive examination fee has been paid;
• The corresponding substantive examination has not been carried out; and
• No other accelerated procedure has been required 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)?

Claims are inadmissible if they:

• contain an ambiguous term – such as 'high', 'wide', 'little', 'much', 'strong' – unless its meaning is recognised in a particular application (eg, 'high frequency'); and/or
• contain a trademark, unless its use is unavoidable (eg, 'velcro', 'cornstarch', 'Teflon').

Likewise, the following are considered unpatentable under Argentine law:

• discoveries (perceiving something that was previously unknown);
• scientific theories;
• mathematical methods;
• literary or artistic works and aesthetic creations;
• scientific works;
• surgical, therapeutic or diagnostic treatment methods applicable to the human body and those relating to animals;
• computer programs;
• plans, rules and methods for the exercise of intellectual activities, games or commercial economic activities;
• forms of presentation of information;
• the juxtaposition of known inventions or mixtures of known products, and variations in form, dimensions or materials;
• all kinds of living matter and substances pre-existing in nature;
• plants and animals, and essentially biological processes for their reproduction; and
• inventions whose exploitation in Argentina must be prevented in order to protect:
• • public order or morality;
  • the health or life of people or animals;
  • the preservation of plants;
  • serious damage to the environment; or
  • the totality of the biological and genetic material existing in nature or its reproduction.

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)?

No, such mechanisms do not exist.

3.7 What subject matter is patent eligible?

Patentable subject matter is established by the Invention Patent and Utility Model Law (24,481).

The invention must be a human creation that allows for the transformation of matter or energy for its use by society (Article 4 of the Invention Patent and Utility Model Law). Anything that does not fall within the definition of an 'invention' will not be patentable.

In order to be protectable under the patent system, an invention must:

• contain patentable subject matter; and
• comply with the three indispensable requirements for patentability – that is:
• • novelty;
  • inventive step; and
  • industrial application.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

An appeal for reconsideration may be filed within 10 working days of notification of rejection before the same authority that issued the resolution, which will also decide on the result.

If this appeal is rejected, it is automatically elevated to a second instance, as a hierarchical appeal, in which the president of the INPI will decide on the outcome. It is not necessary to have previously filed a request for reconsideration: a hierarchical appeal can be filed directly against the rejection of the patent application within 15 working days of notification of the decision.

If the rejection of the patent is ratified in this second instance, legal action may be brought before the federal civil and commercial courts.

It is also possible to file an administrative appeal under the Invention Patent and Utility Model Law. This appeal must be filed within 30 working days of notification of refusal before the president of the INPI, who will also decide on the outcome, pursuant to the legal opinion of the Legal Affairs Directorate. There is no second instance for this appeal – it exhausts the administrative channel, so the applicant may then file a legal action before the courts.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

It is possible to challenge the validity of a patent before the federal civil and commercial courts.

4.2 How can the validity of an issued patent be challenged?

Any third party with a legitimate interest may file a nullity action stating the grounds on which it considers that the patent should not have been granted.

4.3 What are the grounds to invalidate an issued patent?

Invention patents will be null and void, fully or partially, where they have been granted in contravention of the law.

4.4 What is the evidentiary standard to invalidate an issued patent?

All types of evidence are acceptable to demonstrate that the granted patent is in contravention of the law.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

Third-party opposition proceedings are valid only against patent applications within 60 days of publication of the patent.

The only valid mechanism to challenge the validity of a granted patent is a nullity action.

4.6 Who can oppose a granted patent?

It is not possible to file oppositions to granted patents.

Only nullity actions can be filed, by any third party with a legitimate interest.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

Not applicable.

4.8 What are the grounds to file an opposition?

Unless they are manifestly inadmissible and are so declared, the observations of third parties may be based on:

• lack of:
• • novelty;
  • inventive step; or
  • industrial application; or
• the illegality of the subject matter of the application.

4.9 What are the possible outcomes when an opposition is filed?

Observations made by third parties function as recommendations to be evaluated by examiners, but they cannot themselves stop the process.

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?

Not applicable.

5 Patent enforceability

5.1 What makes a patent unenforceable?

Lack of:

• novelty;
• inventive step; or
• industrial application.

5.2 What are the inequitable conduct standards?

There are no rules of inequitable conduct established in the law. However, if information is concealed from or found to be misleading by the National Industrial Property Institute, the patent may subsequently be declared invalid.

5.3 What duty of candour is required of the patent office?

There is no such obligation, but all officers and employees must act in good faith.

6 Patent infringement

6.1 What constitutes patent infringement?

Patent infringement is a type of IP violation that involves manufacturing, using, offering or selling a patented invention or design without the authorisation of the patent holder. The owner may take legal action against the allegedly infringing party to stop the unauthorised use and sale of the patented product.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Yes, in Argentina, the doctrine of equivalents is applied by the courts.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

Only if the merchandise is imported into Argentina.

6.4 What are the standards for wilful infringement?

Upon submittance of the title of the patent or the utility model certificate, the injured party may request, under the guarantees that the judge deems necessary, the following precautionary measures:

• the seizure of one or more copies of the objects in question or a description of the incriminated procedure; and
• the inventory or seizure of counterfeit objects and machines specially used to manufacture the products or to carry out the incriminated procedure.

Judges may order injunctions in relation to a patent granted in accordance with Articles 30–32 of the Patent Law in order to:

• prevent the infringement of the patent and, in particular, prevent goods from entering channels of commerce immediately after customs clearance; and
• preserve the relevant evidence related to the alleged infringement.

To obtain an injunction, the following conditions must be verified:

• There must be a reasonable probability that the patent, if challenged for invalidity by the defendant, will be declared valid;
• It must be summarily proven that any delay in granting such measures would cause irreparable damage to the holder;
• The damage that may be caused to the holder must exceed the damage that the alleged offender will suffer in the event that the measure is erroneously granted; and
• There must be a reasonable probability that the patent will be infringed.

6.5 Which parties can bring an infringement action?

The holders, heirs, licensees and assignees of a patent may file an infringement claim.

6.6 How soon after learning of infringing activity must an infringement action be brought?

There is no need to wait before initiating a legal action – it can be initiated as soon as the violation becomes known. However, the statute of limitations is three years.

6.7 What are the pleading standards to initiate a suit?

The plaintiff must prove:

• ownership of a granted patent;
• the existence of an infringement; and
• that the defendant committed such infringement.

6.8 In which venues may a patent infringement action be brought?

The federal criminal courts and the federal civil and commercial courts.

6.9 What are the jurisdictional requirements for each venue?

• at the place where the infringement occurred; or
• at the place where the infringer lives or is established.

This is valid only for infringements that take place in Argentina.

6.10 Who is the fact finder in an infringement action?

The plaintiff must provide details of the facts and the infringement; however, the judge will appoint an expert to provide an opinion on whether an infringement has taken place. The plaintiff must request the appointment of an expert; the defendant may also request this if the plaintiff fails to do so.

6.11 Does the fact finder change based on venue?

No.

6.12 What are the steps leading up to a trial?

The initiation of an action before the court.

6.13 What remedies are available for patent infringement?

• Permanent injunction;
• Damages;
• Injunctions;
• Imprisonment for between six months and three years; and
• Fines.

6.14 Is an appeal available and what are the grounds to appeal?

Yes. The essential ground is that the initial decision has caused irreversible damage to the losing party. On appeal, the appealing party must state the grounds on which the decision should be overturned.

7 Discovery

7.1 Is discovery available during litigation?

No, in Argentina, discovery is not established as a pre-trial procedure in litigation.

7.2 What kinds of discovery are available?

Not applicable.

7.3 Are there any limitations to the amount of discovery allowed?

Not applicable.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

According to the Civil and Commercial Procedure Code, when a patent infringement lawsuit is filed, the judge must either admit it or reject it within 10 business days of filing.

At the stage of admitting the claim, the judge must verify that the claim meets the formal and substantive requirements established by law.

8.2 What is the legal standard used to define claim terms?

The claim must meet the following substantive requirements:

• Active legitimacy: The plaintiff must have standing to file the lawsuit – that is, it must be the patent holder or be authorised to act on the patent holder's behalf.
• Passive legitimacy: The defendant must be responsible for the patent infringement.
• Subject matter of the lawsuit: The claim must seek a judgment:
• • declaring that the patent has been infringed; and
  • ordering the defendant to cease and desist the infringement.
• Cause of action: The claim must be based on a valid cause of action – that is, the infringement of the patent.

8.3 What evidence does the tribunal consider in defining claim terms?

The court will consider all evidence that demonstrates contentious facts, including:

• documentary evidence;
• testimonial evidence;
• confessional evidence;
• expert evidence;
• instrumental evidence; and
• informational evidence.

The evidence must be:

• relevant and pertinent to the object of the litigation;
• admissible – that is, it must not be illegal, immoral or contrary to the law; and
• presented in a timely manner (ie, before the evidentiary stage is closed).

9 Remedies

9.1 Are injunctions available?

Yes, the following injunctions are available:

• Seizure: An injunction involving the retention of the defendant's goods or money to ensure the payment of the debt or compensation claimed.
• Retention: An injunction involving the retention of a good or right to prevent its loss or destruction.
• General inhibition of assets: An injunction prohibiting the defendant from disposing of its possessions or rights to ensure payment of the debt or compensation claimed.
• Special inhibition of assets: An injunction prohibiting the defendant from disposing of a specific good or right to ensure payment of the debt or compensation claimed.
• Annotation of a litigation: An injunction involving the annotation of the litigation in the Patent Register to prevent the transfer or encumbrance of the assets involved in the litigation.
• Measure of not innovating: An injunction prohibiting the defendant from taking actions that could alter the factual or legal situation. This aims to avoid harming the plaintiff's rights.
• Preservation measure: An injunction aimed at conserving a good or right to prevent its loss or destruction.
• Document seizure measure: An injunction involving the retention of documents relevant to the litigation to prevent their loss or destruction.
• Registration inhibition measure: An injunction prohibiting the registration or inscription of rights in the Patent Register to prevent the transfer or encumbrance of the goods involved in the litigation.
• Suspension measure: An injunction suspending acts or contracts that could harm the plaintiff's rights.

9.2 What is the standard to obtain an injunction?

• The requesting party must have a legitimate interest in the injunction;
• The injunction must be necessary to prevent imminent harm;
• The injunction must be proportional to the harm it seeks to prevent;
• The injunction must be requested before the final judgment is issued; and
• A counter-caution must be provided.

9.3 Are damages available?

Yes.

9.4 What types of damages are available?

The most common types of damages are as follows:

• Actual damages: refers to the loss or reduction of a good or right, such as the loss of a valuable object or the destruction of property.
• Loss of profits: refers to the loss of benefits or profits that would have been obtained if the damage had not occurred.
• Moral damages: refers to the suffering, anguish, sadness, humiliation, etc., experienced as a result of the damage.
• Aesthetic damages: refers to the alteration or loss of a person's physical appearance, such as the loss of a limb, a scar, etc.
• Psychological damage: refers to the alteration or loss of a person's mental health, such as depression, anxiety, etc.
• Health damage: refers to the loss or reduction of physical or mental health, such as being unable to work or the need for medical treatment.
• Loss of freedom: refers to the restriction or loss of a person's freedom, such as detention or imprisonment.
• Damage to reputation: refers to the loss or reduction of a person or company's reputation, such as the loss of clients or low credibility.
• Property damage: refers to the loss or reduction in the value of property, such as the destruction of a building or loss of a valuable object.
• Environmental damage: refers to the loss or reduction in the value of the environment, such as water pollution or destruction of ecosystems.

9.5 What is the standard to obtain certain types of injunctions?

All injunctions are subject to the same requirements:

• The request for an injunction must be justified; and
• The request for an injunction must be aligned with what is requested in the lawsuit.

Please see question 9.2.

9.6 Is it possible to increase or multiply damages due to a party's actions?

Yes. The quantification of damages is a complex process that requires expert evaluation and the consideration of various factors, such as:

• the seriousness of the damage;
• the duration of the damage; and
• the age and health status of the victim.

9.7 Are sanctions available?

In criminal actions, a fine can be imposed. There are no punitive damages in civil or commercial actions.

9.8 What kinds of sanctions are available?

Please see question 9.7.

9.9 Can a party obtain attorneys' fees?

Yes. In Argentina, in a civil process, a party can obtain attorneys' fees as part of the final decision.

According to the Civil and Commercial National Procedure Code, the judge may order the losing party to pay the attorneys' fees of the winning party, provided that certain requirements are met.

9.10 What is the standard to obtain attorneys' fees?

• Successful outcome: The party requesting the fees must have obtained a favourable judgment in the process.
• Request for attorneys' fees: The party requesting the fees must have expressly requested costs in its claim or in its response to the claim.
• Regulation of fees: The judge must determine the winning party's attorneys' fees, considering:
• • the complexity of the case;
  • the time and effort invested by the attorneys; and
  • the results obtained.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

Through a licence, different types of patent rights may be obtained, depending on the terms and conditions agreed upon between the licensor and the licensee. The most common types are as follows:

• Use licence: Allows the use of the invention protected by the patent, but does not grant the right to manufacture, sell or distribute the invention.
• Manufacturing licence: Allows for the invention protected by the patent to be used in manufacturing, but does not grant the right to sell or distribute the invention.
• Sales licence: Allows the sale of the invention protected by the patent, but does not grant the right to manufacture or distribute the invention.
• Distribution licence: Allows the distribution of the invention protected by the patent, but does not grant the right to manufacture or sell the invention.
• Exclusive licence: Grants the exclusive right to use, manufacture, sell or distribute the invention protected by the patent, meaning that the licensor cannot grant licences to other third parties.
• Non-exclusive licence: Grants the right to use, manufacture, sell or distribute the invention protected by the patent, but the licensor can grant licences to other third parties.
• Sub-licensing licence: Allows the invention protected by the patent to be sub-licensed to other third parties, meaning that the licensee may grant licences to others to use, manufacture, sell or distribute the invention.
• Improvement licence: Allows the licensee to:
• • improve the invention protected by the patent; and
  • obtain a licence to use, manufacture, sell or distribute the improved invention.
• Pending patent licence: Allows the use, manufacture, sale or distribution of an invention that has not yet been patented but for which a patent is pending.
• Valid patent licence: Allows the use, manufacture, sale or distribution of an invention that has already been patented and is in force.

10.2 What limits can a patent owner impose on a licence?

The patent holder can impose various limits on a licence, depending on the terms and conditions agreed between the licensor and the licensee. The most common limits include the following:

• Territoriality: The patent holder can limit the licence to a specific territory, such as a country or region.
• Duration: The patent holder can limit the duration of the licence, setting a start and end date.
• Use: The patent holder can limit the use of the invention protected by the patent, specifying what activities the licensee can carry out.
• Manufacturing: The patent holder can limit the manufacturing of the invention protected by the patent, specifying who can manufacture the invention and in what quantities.
• Sales: The patent holder can limit the sales of the invention protected by the patent, specifying who can sell the invention and in what quantities.
• Distribution: The patent holder can limit the distribution of the invention protected by the patent, specifying who can distribute the invention and in what quantities.
• Sub-licensing: The patent holder can limit the sub-licensing of the invention protected by the patent, specifying whether the licensee can grant sub-licences to other third parties.
• Improvement: The patent holder can limit the improvement of the invention protected by the patent, specifying whether the licensee can make improvements to the invention.
• Royalty payment: The patent holder can set a royalty payment for the use of the invention, specifying the amount and frequency of payments.
• Reports: The patent holder can require the licensee to provide reports on the use of the invention, specifying the frequency and content of the reports.
• Inspection: The patent holder can have the right to inspect the licensee's facilities and processes involved to ensure that the licence terms are being met.
• Confidentiality: The patent holder can include confidentiality clauses to protect sensitive information related to the invention protected by the patent.
• Non-compete: The patent holder can include non-compete clauses to prevent the licensee from competing with the patent holder in the market.
• Exclusivity: The patent holder can include exclusivity clauses to prevent the licensee from granting licences to other third parties.
• Dispute resolution: The patent holder can set mechanisms to resolve disputes that may arise during the term of the licence.

The limits imposed on a licence:

• must be reasonable; and
• cannot be contrary to the law or principles of fair competition.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

Yes, there are limits to patent protection due to antitrust laws in Argentina. The Competition Defence Law (25,156) and the Abuse of Dominant Position Law (25,157) establish limits to patent protection to prevent the formation of monopolies and unfair competition, including the following:

• Abuse of dominant position: The Abuse of Dominant Position Law establishes that companies with a dominant market position cannot use their patents to abuse their position and restrict competition.
• Unfair competition practices:The Competition Defence Law establishes that companies cannot use their patents to engage in unfair competition practices, such as:
• • product imitation; or
  • misleading advertising.
• Licensing limitations: The Competition Defence Law establishes that companies with patents cannot restrict the licensing of their patents in ways that limit competition.
• Obligation to license: The Competition Defence Law establishes that companies with essential patents for competition in the market may be required to license their patents to others.
• Price regulation: The Competition Defence Law establishes that companies with patents cannot set abusive or anti-competitive prices for their products.
• Patent duration limitations: The Competition Defence Law establishes that patents cannot be used to restrict competition beyond the patent's term.
• Exceptions to patent protection: The Competition Defence Law establishes exceptions to patent protection, such as:
• • legitimate use; and
  • research purposes.

The application of antitrust laws in Argentina can vary depending on the specific circumstances of each case, and the National Commission for the Defence of Competition is responsible for applying and enforcing these laws.

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.