Amendment to the regime for adequation of claims based on foreign patent grants
Intellectual Property – Patents and Trademarks Deparment Report | Amendment to the regime for adequation of claims based on foreign patent grants.
Dear All,
On May 13, 2026, the National Institute of Industrial Property (“INPI”) published Resolution No. 142/2026 (the “Resolution”, available here) in the Official Gazette. This Resolution amends INPI Resolution No. P-056/2016, eliminating the time restrictions for requesting that international prior art search and patentability requirements be deemed fulfilled.
Background
INPI Resolution No. P-056/2016 empowers the Argentinean Patent Office to deem fulfilled the international prior art search and the patentability requirements of Section 4 of Law No. 24.481 (absolute novelty, inventive step, and industrial applicability) for patent applications that have already been granted abroad by an patent office that conducts registrability examinations under standards equivalent to those of Argentina. This framework applies both to applications invoking Paris Convention priority and to those that, without having invoked it, prove the foreign grant of an invention with a homologous subject matter.
Previous Framework
The request to apply this framework had to be submitted before the INPI conducted the substantive examination of the application.
Updated Framework
The new Resolution eliminates this time restriction, allowing the applicant to voluntarily submit the request to apply Resolution P-056/2016 at any stage of the proceedings prior to the issuance of the administrative act granting or denying the patent.
To this end, the applicant must adjust the scope of the national claims to match the claims granted abroad.
The Argentinean Patent Office must issue a ruling within sixty (60) days from the date of the request.
Effective Date
The Resolution entered into force on May 13, 2026.
We remain at your disposal should you require any additional information.
Sincerely,
Alan Panno