The Argentine Patent Office (INPI) has recently issued Resolution P-56/2016 in order to speed up the granting procedure of those Argentinian patent applications for which an equivalent patent has been granted by a foreign patent office.
Resolution P-56/2016, which will enter into force on October 15, 2016, will revoke the provisions of similar resolutions P125/09 and P263/03, currently in force, to all Argentine patent applications, regardless of when they have been filed in the INPI. Resolution P125/09 was only applicable to patent applications filed up to May 22, 2009.
By means of Resolution P-56/2016 and with the aim of accelerating the granting process of Argentine patent applications, the examiners at the Argentine PTO are able to acknowledge the patentability requirements of novelty, inventive step and industrial applicability referred to the international prior art search for those patent applications having an equivalent granted patent in a foreign PTO.
In this manner, only Argentine prior art would be searched during the examination process and the patent application would be in a position to be granted with the proviso that
- the substantive examination stage has not yet started;
- the scope of the claims in the Argentine application is not broader than the scope of the foreign patent granted claims;
- there are no national documents affecting the patentability;
- the claimed subject matter is not excluded from patentability; and
- the foreign patent is granted by a PTO with similar patentability criteria to those of the INPI.
According to this, applicants can make use of resolution P-56/2016 and file a voluntary amendment of the pending claims adapting them to those of the granted counterpart patent. Applicants can also be invited by the INPI before the substantive examination to benefit from the resolution.
Resolution P-56/2016 establishes that, in those cases where applicants request voluntarily its application, the INPI must issue a resolution within 60 days from the request, meaning that the corresponding patent application will be prioritized over other applications in the examination process. This involves a change with regard to previous resolutions P125/09 and P263/03, where the corresponding patent application was not prioritized over other applications in the examination process: it remained in the same order of precedence and, at the moment of the examination, the amended claims equivalent to those granted in a counterpart patent, were taken into account by the examiner in order to speed up the granting process.
It should be noted that the claims must be adjusted to comply with the Argentine requirements, e.g., the set of claims can only have one independent claim and use claims are not allowed.
Additionally, the resolution establishes that the equivalent foreign patent must have been granted by a PTO with similar patentability criteria to those of the INPI.
Please click here to read Resolution 56/2016.
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