Intimation to patent application holders
Intellectual Property – Patents & Trademarks department report | Intimation to patent application holders
On August 26, 2024, Resolution No. 364/2024 (the “Resolution” – available only in Spanish here) was published in the Official Gazette, which requires holders of pending patent applications -that have invoked priority of foreign patents- to inform whether the priority invoked was granted in their country of origin or not.
Article 1 of the Resolution mentions articles of both ADPIC and Law No. 24.481.
On the one hand, Article 29.2 of ADPIC provides that, as a condition imposed on patent applicants, “[m]embers may require an applicant for a patent to provide information relating to its applications and related grants of patents abroad”.
On the other hand, section 92 (k) of the Invention Patent and Utility Model Law No. 24.481 (t.o. 1996) provides that “[t]he INPI shall have the following functions: (…) [r]egulate the invention patent and utility model procedure, in everything that facilitates it, adapt requirements that become obsolete due to the implementation of new technologies and simplify the registration procedure in favor of the person concerned and society as a whole”.
Returning to the Resolution, Article 1 mentions that “[c]onforming the provisions of Articles 29 paragraph 2 of TRIPS and 92 paragraph k) of Law No. 24.481 (t.o. 1996), as amended, the NATIONAL PATENT ADMINISTRATION (“NPA”) is delegated sufficient powers to summon the owners of patent applications pending at the time this Resolution enters into force -whether or not they have paid the substantive examination fee and regardless of the stage of their proceedings-, that have been filed before this Institute and have invoked priority under the terms of Article 4 A 1 of the Paris Convention, Law No. 17.011, so that they may, by themselves or through their attorneys-in-fact and within SIXTY (60) calendar days, state whether or not the priority invoked in the terms set forth above has been granted in the country of origin, it being made known that in the absence of a response to such request, the respective application shall be deemed abandoned.
Article 2 provides that “[t]he requirement referred to in Article 1, made by the NPA, shall be notified to the holders of patent applications or their legal representatives through publication in the Patent Notification Bulletin (“PNB”), as prescribed by INPI´s Resolution No. P-191/2020…”.
Two things should be noted:
– The NPA requirement will be notified in the PNB.
– The Resolution mentioned in the previous paragraph establishes that the term of the notifications of the acts notified through the PNB will start to run as from the 30 calendar days following the publication of the Bulletin.
This means that, to the 60 calendar days stipulated in Article 1, the 30 calendar days stipulated in INPI´s Resolution No. P-191/2020 should be added.
Finally, Article 3 states that “[o]n expiration of the term of the notice, the NPA shall issue the pertinent administrative act providing for the abandonment of the patent applications that have incurred in the warning established in Article 1, which shall be published in the PNB”.
We remain at your disposal for any additional information you may consider necessary.
Yours sincerely,
Emilio Beccar Varela
Florencia Rosati
Mariana Lamarca Vidal