1. What are the novelty or inventiveness requirements for a patent to be granted?
According to section 4 of Patent Law No. 24.481 amended by Laws Nos. 24.572 and 25.859 (the Patent Law), the requirements for a patent to be granted are: novelty, inventive activity and industrial application. In part (b) of this section, novelty is defined as not belonging to the state of the art.
2. What are the criteria for considering whether an invention is obvious in view of prior art?
Obviousness would be equivalent to the lack of inventive activity concept. Inventive activity is defined in part (d) of section 4 of Patent Law No. 24.481, as when the creative procedure or its results cannot be deduced from the state of the art, by an expert in the art.
3. What are the different types of patent protection that can be obtained in your country, for example, utility, design database? How do these types of patent protection differ?
According to the Patent Law, inventions are protected through patents and utility models. As compared with patents, no inventive activity is required for utility model protection.
4. What is the duration of patent rights protection?
Patents are granted for a maximum of 20 years, while utility models are granted for 10 years, in both cases counted from their filing dates.
5. If an invention is conceived in your country, does the first filing have to be made there?
6. What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
There are no foreign filing licence requirements in Argentina.
7. Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas that are not eligible for patent protection?
Computer methods are currently protected by copyright. Argentina has ratified and is a member of the Berne Convention (Law No. 25.140).
However, there have been cases in which computer programs together with a machine were considered as involved in the patent scope.
8. Summarise the current level and nature of patent litigation in your country? Are there particular litigation trends related to specific industries, such as the pharmaceutical, payments, data analytics?
Patent litigation is prosecuted at federal courts, which act as specialist courts in the handling of these cases.
9. What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?
In connection with civil actions, patent holders can claim the offender to stop using the patent, as well as compensation and also precautionary measures, such as merchandise seizure.
According to the civil law, the compensation can cover: general damages, loss of profits and non-material damage. The judge will decide the amount of the compensation on a case-by-case basis.
10. Is your country considering major changes to its patent system?
Not for the time being.
Argentina is not a member of the PCT. In view that many Latin American countries are PCT members, the latter shall encourage the government authorities to speed Argentina's adherence to such an important international agreement.
Efforts are being made by the national authorities of the Patent Office to speed up patent prosecution procedures.
11. Does your country recognise the "patent exhaustion" doctrine, and, if so, how does the application of the doctrine compare with those in other jurisdictions?
“Patent exhaustion doctrine” is recognised in sections 36 and 37 of the Patent Law, which establishes several specific circumstances.
According to the patent exhaustion doctrine, sale of a patented article without any conditions attached ends the patentee's monopoly right to control its use. First unrestricted sale of a patented item exhausts the patentee's control over that particular item. However, the control may be exercised by limitations in a contract or licence provided it does not amount to anticompetitive patent misuse.
12. Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?
Argentina is not a member of the Madrid Protocol, and is not likely to join the same soon.
Argentina is signatory to the TRIPS Agreement (Law No. 24.425).
13. Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
Argentina is not a member of the Andean Community.
Argentina is member of the Mercosur Agreement. However, the Mercosur Agreement does not include the registration of a unique trademark for the entire region. Thus, single and separate trademark applications need to be filed in each of the Mercosur countries to obtain trademark protection.
14. What is the duration of trademark rights protection?
Ten years. The latter may be renewed indefinitely, as long as the owner uses the trademark within five years prior to its due date.
15. What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
There are no rules in connection with the use of these symbols in connection with trademarks.
16. What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
The main problem affecting trademark owners in our country is counterfeiting. However, in recent years there have been strict major measures taken to resolve this matter, such as raids on the illegal fairs and street vendors as well as in the "La Salada", considered as the largest illegal fair in the world, where 50 per cent of the sports clothing sold is counterfeit.
Additionally, the federal judges who are in charge of actions against counterfeiters are very efficient in handling these cases, more specifically in the application of enforcement measures based on the TRIPS Agreement to which Argentina is a signatory. The “Custom Alert System” handled through National Customs is also a very effective tool in the fight against counterfeiting.
17. Does a trademark licence have to be recorded in your country to be effective?
Recordation of a licence agreement is not mandatory. However, licence agreements that are recorded obtain tax benefits for the remittance of royalties abroad and also to be able to to obtain an official date to prove the validity and existence of the agreement.
18. What strategies have been successful in combating counterfeiting in your country?
As a member of the TRIPS Agreement, the application of precautionary measures and raids against illegal merchandise have been successful. Additionally, the use of the registration of trademarks at Customs, through the “Customs Alert System”, has also been an excellent tool in combating counterfeiting.
19. Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
20. Do you recommend that companies register their domain name in your jurisdiction if they do business there?
Yes, through the domain name ".com.ar." and ".ar", in order to avoid the registration of the same by third parties.
21. Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
Our trademark law does not allow extensions of time or grace periods for the filing of an opposition. Argentina does not follow the multi-class system and thus it is necessary to file a separate trademark per class. There is no need to have prior use of a trademark in Argentina upon filing.
22. What are the key legal issues to be considered when registering a trademark in your country?
A search of antecedents should be conducted before filing. Also, it is advisable to check if the term to be registered is not generic and the meaning in Spanish language does not have any erroneous meaning.
23. Can a multi-class trademark application be filed in your country?
No. Argentina does not follow the multi-class system. Consequently, a single trademark application needs to be filed per trademark per class.
24. Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
Yes. Oppositions against the registration of a trademark must be filed at the Trademarks Office within 30 running days as from the publication of the trademark in the Trademarks Bulletin. It is not possible to extend the deadline.
It is important to mention that, since the official notification, there is a three-month term for the opposed party to try to obtain the amicable withdrawal of an opposition. Once this period of three months has ended, if the withdrawal has not been obtained, the opponent must decide to keep the opposition in force, namely, first by paying an additional official fee to maintain the opposition, and secondly by the filing of additional arguments and evidence. In due course, the applicant will have the opportunity to answer the opposition, providing evidence, after which the Trademarks Office will decide whether the opposition is valid.
If the opposition has not been maintained, it will be considered by the Trademark Office as an informal objection, which is not mandatory for the Trademark Office, and the procedure of the trademark application will continue automatically.
25. Does your country have a judicial or other governmental process to restrict the importation of counterfeit goods? If so, give details.
Yes, through the registration of trademark at Customs through the “Customs Alert System”.
26. What are the key issues to be considered when licensing trademark use rights in your country? Does your jurisdiction invalidate trademarks based on "naked licences" (ie, where the licensor does not impose quality standards on the goods and services associated with the licensed trademark)?
As a general rule, it is very important to carefully select the licensee and execute a licence agreement reviewing the same with local counsel.
Our jurisdiction does not invalidate trademarks based on “naked licences”.
27. Are there any limits on the scope of licensee indemnification relating to workmanship, material, or design of any products, articles, logos, characters, etc, bearing the licensed trademark?
No. The limits and specifications rely on the terms of the licence agreement, as agreed by the parties.
28. Under what circumstances may a trademark licence be deemed a franchise arrangement under the laws of your country?
Licence and franchise agreements are considered as different types of agreements according to Argentine Law, and thus subject to the agreement between the parties.
29. Are there any conditions or limitations on the ability of a trademark licensor to enforce or terminate a trademark licence agreement?
The conditions or limitations rely on the terms of the licence agreement established by the parties.
30. Under what circumstances may a trademark be legally deemed "abandoned" under the laws of your country where there is no obvious decision by the trademark owner to abandon the trademark?
According to article 26 of the Trademark Law No. 22,362, the Argentine Trademarks Office, acting on its own motion or through a third party, can declare the cancellation of trademark if the trademark has not been used during the last five years prior to the filing of the request of a cancellation action.
31. Is copyright registration recommended for local packaging and marketing materials?
32. What is the duration of copyright protection?
If the author is the owner, the duration of copyright protection is all his or her life, and 70 years after his or her death for his or her heirs.
If it is a legal person, it is 50 years after the first publication.
33. Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?
The matter is decided on a case-by-case court decision.
34. Does your country recognise the 'first sale' doctrine for purposes of limiting copyright enforcement?
35. What is the standard of contributory copyright infringement in your country?
Copyright infringement takes place from the simple photocopying of written materials, to software, music, films, TV formats or any other artistic work as foreseen in Copyright Law No. 11.723.
All of these infringements are punishable under Argentine law.
36. What are the criminal sanctions for intellectual property infringements?
The criminal actions for copyright infringments are foreseen in Law 11.723 in articles 71, 72, 72 bis, 73, 74.
Article 71 provides a generic sanction against those who breach copyright. The penalty is from one month to six years of imprisonment.
Articles 73 and 74 foresee criminal sanctions that are mitigated due to certain circumstances.
37. Does your country recognise intellectual or industrial property protection in databases?
38. Does your country recognise a right of publicity?
Yes. Chapter 3 of the Civil and Commercial Code (Law 26.994) includes provisions related to the personality rights, such as the use of the image of a person.
39. Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR for IP disputes?
The benefits of mediation are confidentiality, as well as that the parties will reach a solution often for the mutual benefit of the parties and faster than the ones that the judges may provide.
40. Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?
Yes, through the registration of trademarks at Customs (the Customs Alert System).
41. Describe any recent major developments or anticipated changes in your intellectual property law.
The trademark opposition procedure has suffered important changes, according to the amendments established by Decree No. 27/2018, INPI Resolution P-183 and Law No. 27.444.
Under this new procedure, which entered into force as of 18 September 2018, the applicant and the opponent have to reach an amicable settlement within three months as from the date on which the applicant has been notified of the opposition.
After this period, the Trademarks Office (TMO) notifies those opponents who have not withdrawn their opposition to maintain the effect of the opposition to the trademark registration by ratifying the same and paying an additional fee within a non-extendable period of 15 working days, and, within that same period, to extend the grounds for their opposition with additional arguments for their purported right and offer the evidence they deem relevant. It is important to highlight that, if an opposition is not maintained, it will be considered by the TMO as an informal objection, and the procedure of the trademark application will continue automatically.
Within 15 working days of the conclusion of the aforementioned period, and regardless of whether the opponents have expanded the grounds of their opposition, the TMO notifies the applicant of every opposition that is still effective and of any additional arguments, and the applicant is given a non-extendable period of 15 working days to individually reply to each opposition and provide the evidence the applicant deems appropriate.
Within this 30-day period the parties must finalise the agreed mediation, conciliation or alternative method of conflict resolution. Subsequent to this 30-day period, a new 10-working-day period automatically starts running, with the same effect and scope as the suspended one. If the parties have resolved the conflict by way of the chosen process, this is reported to the TMO before the expiry of the specified term, along with evidence of this result. In the event that the parties resolve the dispute by way of the chosen process, the TMO will not issue a decision on the dispute, given that the parties have already resolved the matter by themselves. However, the parties’ agreement will not bind the TMO to a particular outcome in respect of the granting of the trademark application.
Upon expiration of the 10-day term, if the case has not been previously dismissed, the TMO issues its decision regarding any oppositions to the trademark application that are still in effect, including stating whether or not these oppositions were well founded.
To appeal the TMO’s final decision, a direct appeal must be made to the TMO within 30 working days of the notification of the decision. The appeal must be accompanied by payment of the relevant administrative fees.
The TMO will resolve in respect of the oppositions, and not in respect of the application itself. That is to say, that the TMO may consider that the oppositions are ill founded, and after that, when the procedure of the trademark application continues, deny the registration of said trademark application (ie, citing an antecedent that it deems does not allow the application to mature into registration).
On 23 May 2019, the National Institute of Industrial Property (INPI) issued Resolution No. 123/2019, which clarifies certain provisions of Regulatory Decree No. 242/19 of the recently amended Law on Trademarks and Designations (Law No. 22,362).
Resolution No. 123/2019 was published in the Official Gazette of 27 May 2019 and entered into force on 3 June 2019.
Resolution No. 123/2019 introduced the following amendments in connection with Trademark Law prosecution:
- Mid-Term Declaration of Use (MTDU): to maintain a trademark in force, it is mandatory to file with the Trademarks Office an MTDU in the following cases:
A) Trademarks granted for the first time
The MTDU has to be filed for those trademarks granted for the first time since 12 January 2013 that were completed five years from the registration date.
For all these cases, the due date for the filing of the MTDU is of one year from the fifth year since the registration date until its sixth year of registration.
B) Registered trademarks as a result of a previous renewal
The MTDU has to be filed for those renewed trademarks that expire from 12 January 2023 onwards.
The due date for the filing of the MTDU in respect of a renewed trademark is one year. Nevertheless, in the case of renewed trademarks, the deadline for submission is determined counting backwards five years from the due date of the trademark, until its sixth year.
- Grace periods in respect of trademark renewals: the renewal application may be filed six months before or six months after in respect of the due date of the trademark.
Trademarks filed during the six months’ grace period need to pay an additional official tax.
- New deadlines to answer office actions issued by the Trademarks Office (TMO). Office actions and resolutions, issued by the TMO are notified by the Official Gazette.
Except for the deadlines of the opposition procedure (established by Decree No. 27/2018 and INPI Resolution P-183), all the other the deadlines of office actions or resolutions issued by the TMO have to be counted after adding 30 calendar days from the publication of the office action or the resolution.
This term was previously 60 calendar days. Consequently, after Resolution No. 123/2019, these terms have been significantly reduced.
Extension of deadlines to answer office actions: the aforementioned resolution also reduced the days of term extensions. Presently, there are two automatic and successive term extensions:
- 1st: 10 calendar days; and
- 2nd: five calendar days.
For example: let us say that the TMO issues an office action to us to answer in 20 calendar days.
To establish its due date, we will have to add 30 calendar days counting from the date that the office action is published at the Official Gazette Then, we will have to add the 20 calendar days of the office action, and then add the aforementioned two automatic and successive term extensions of 10 and five calendar days, respectively.
However, if we answer the office actions during the period of these automatic term extensions, it shall be necessary to pay additional fees.
On 8 October 82019, the National Institute of Industrial Property (INPI) issued Resolution No. 279/2019, which clarifies certain provisions of Regulatory Decree No. 242/19, which amended the Law on Trademarks and Designations (Law No. 22,362).
This resolution was published in the Official Gazette of 10 October 2019 and entered into force on 9 December 2019.
Resolution No. 279/2019 refers to the following aspects:
Administrative resolution of declaration of nullity of a trademark
It will only proceed against registered trademarks, and it can be requested by third parties or ex officio.
Ex officio: it will only proceed in the case of detecting a serious defect that cannot be amended during the trademark registration procedure.
Third parties: it will only proceed when damage to a subjective right is invoked by the claimant.
Once the nullity has been requested, either ex officio or by third parties, the owner of the trademark will be notified by an office action, to reply and submit evidence at no cost, within 15 business days.
Once the answer of the office action is filed or the term expires, the TMO will resolve the issue.
Administrative resolution due to a non-use cancellation action
It will only proceed against registered trademarks that have been granted before the filing of the third party or ex officio five years.
Ex officio: it will only proceed in the following circumstances:
- the trademark has not been used within the prior five years;
- if the “MTDU” has not been filed; or
- if the trademark is a well-known trademark according to the provisions of the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement.
Third parties: it will only proceed when damage to a subjective right is invoked by the claimant.
Once the non-use cancellation action has been filed the owner of the trademark will be notified by the TMO through an office action, to reply and submit evidence, within a period of 15 business days.
Once the answer of the office action is filed or the term expires, the TMO will resolve the matter.
Trademark partial non-use cancellation actions may be filed as of 12 June 2023.
On 21 October 2019, the INPI issued Resolution No. 288/2019, which was published in the Official Gazette of 22 October 2019.
This Resolution states that, as of 15 November 2019, the international classification tool Mclass and the harmonised EUIPO database is used mandatorily for the completion of goods and services on trademark application forms.
Consequently, from that date, new trademark applications for “all class” are no longer accepted.
Furthermore, since the aforementioned date, trademark applications and opposition forms, also need to be filed electronically through the INPI’s website.
On 29 October 2019, the INPI issued Resolution No. 297/2019, which was published in the Official Gazette of 30 October 2019.
This Resolution implements automatic and consecutive extensions of 30 calendar days for each extension and in each case, to answer office actions in respect of the preliminary examination, clarifications prior to the substantive examination, substantive technical examination and in respect of the report prior to the final resolution.
Finally, on 23 January 2020, the INPI issued Resolution No. 9/2020, which was published in the Official Gazette of 28 January 2020.
This Resolution implements the official notifications shall be made electronically.
Even that other administrative notifications are still done by bulletins or to the physical legal address (in specific cases, such as in respect of non-use cancellation action trademarks procedures), we understand that the INPI is presently developing a new virtual platform for electronic notifications in respect of trademarks, patents, utility models, and other procedures, including transfer of technology.
42. Describe any significant recent court decisions in your country relating to intellectual property.
In the case Lafedar SA Laboratorios Federales Argentinos SA v Craveri SA it was established that trademark application "PALAN” in intl. class 5 in the name of the plaintiff is not confusingly similar in respect of trademarks "PLAN B" and “PLAN CRAVERI” also in intl. class 5, in the name of the defendant and opponent of the aforementioned application.
The judge of First Instance stated that: (i) the trademarks in conflict are neither graphically nor phonetically similar to the terms “B” and “CRAVERI” of the trademarks in the name of Craveri SA; (ii) that the trademarks in conflict have a different number of letters; (iii) that the term CRAVERI indicates the origin of the product; (iv) that, from the ideological point of view, trademark PLAN B is neither confusingly similar in respect of PLALAN (as PLAN B refers to secondary strategy in case the main one fails).
Further, the judge of Second Instance confirmed the aforementioned resolution, adding that: (i) the term PLAN is a common use term in intl. class 5 and it cannot be monopolised; (ii) that the consumer of pharmaceutical products of intl. class 5 is qualified, therefore, this circumstance also removes the possibility of confusion between these trademarks.
It is important to highlight that this case was initiated before the amendments to the opposition procedures mentioned in question 42. Consequently, these types of cases are currently resolved by the Trademarks Office (with the possibility to appeal the Trademarks Office’s decision, to be reviewed by the federal courts).
43. Are there any licence agreement formalities for intellectual property that must be observed?
To be valid, a licence agreement should be certified by a notary public, include the apostille of the Hague Convention of which Argentina is a member, or have the agreement legalised by the corresponding Argentine Consulate.
A sworn translation into Spanish shall be required for recordal.
44. Does your country have a cybercrime law that provides for civil remedies in connection with either computer intrusions or theft of intellectual property? Are other causes of action or remedies available in your jurisdiction as regards unauthorised computer intrusion and misappropriation of electronic information?
In respect of personal information, it is important to mention the Law of Protection of Personal Data, Law. No. 25.326, which in article 1 states that:
the purpose of this law is the integral protection of personal data stored in files, registers, data banks, or other technical means of data processing, whether public or private, intended to provide reports, to guarantee the right to the honour and the privacy of people, as well as access to the information that is recorded on them, in accordance with the provisions of article 43, third paragraph of the Constitution.
Article 5 of the Law of Protection of Personal Data states that:
(Consent) The processing of personal data is unlawful when the owner has not given his free, express and informed consent, which must be in writing, or by any other means that allows to be equated, according to the circumstances (…).
Additionally, article 14 states that:
(Right of access). 1. The owner of the data, upon accreditation of his identity, has the right to request and obtain information of his personal data included in public or private data banks intended to provide reports. 2. The person responsible or user must provide the requested information within ten calendar days of having been reliably notified.
In respect of the action to protect personal data article 33 establishes:
1. The action to protect personal data or “habeas data” will proceed: a) to have knowledge of the personal data stored in public or private files, registers or data banks, intended to provide reports, and of their purpose; b) in cases where the falsity, inaccuracy, outdatedness of the information, or the treatment of data whose registration is prohibited in this law, is presumed, in order to require its rectification, deletion, confidentiality or updating.
As regards cybercrime, article 1716 of the Civil and Commercial Code, the violation of the duty not to harm another person, or the failure to fulfil an obligation repairs the damage caused.
Argentina has a public prosecutor's office specialising in cybercrime.
Law No. 26.388 added new criminal offences to the Penal Code related to cybercrime, such as the unauthorised access to the computer system or database, improper publication of an electronic communication, computer fraud and computer damage.
45. Briefly describe the tax considerations for intellectual property in your jurisdiction including any incentives.
The registration of licence agreement with INPI grants the licensee important deductions in income tax purposes. See the Transfer of Technology Law No. 22.426 as amended by Decrees No. 1852/93 and No. 580/81, respectively.
46. Briefly describe the intersection between intellectual property and competition law in your jurisdiction.
Argentine Law No. 25.156 of the Competition Law specifically punishes restriction, faking or distortion of competition or access to the market, or behaviour that constitutes abuse of a dominant position in the market that may result in damage to the general economic interest.
The latter also applies to any type of agreement, including licence agreements.
47. Briefly explain the implications of a bankruptcy filing under the laws of your jurisdiction on intellectual property licensed rights.
Argentina does not include specific regulations in connection with the effects of bankruptcy related to licence agreements.
However, as intellectual property is an intangible asset, it forms part of the assets that are included in a bankruptcy proceeding.
Parties concerned should make sure they emphasise to the courts intervening in these cases to pay heed to the importance of said intangible assets.