Patents & Trademarks
A legal briefing on patents and trademarks in Argentina. Prepared in association with Marval, O’Farrell & Mairal, a leading global law firm, this is an extract from The Pharma Legal Handbook: Argentina, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
To obtain patent protection in Argentina, it is necessary to file a patent application before the National Institute of Industrial Property, or INPI after its acronym in Spanish (“Instituto Nacional de la Propiedad Industrial”). Inventions not patented in Argentina may only be protected as trade secrets, to which end they must meet the specific requirements of Argentine Confidentiality Law (information must be secret, have a commercial value because it is secret, and have been subject to reasonable steps to keep it secret).
The specific requirements for obtaining patent protection are eligibility, novelty, non-obviousness, industrial applicability, clarity, adequate disclosure (of the inventions), best mode and sufficient support. Also, the inventions may not be illegal or immoral.
To obtain trademark protection, a trademark application must also be filed with INPI. Exceptionally the Argentine courts have granted a measure of protection to unregistered trademarks, that is de facto trademarks and foreign trademarks not registered in Argentina (see infra at 5.).
The specific requirements for obtaining trademark protection in Argentina are allowability, novelty and distinctiveness (of the signs involved). Also, the signs may not be illegal or immoral. Additionally, the trademark application must meet the formal requirements provided by the Argentine Trademark Law and other regulations.
2. What agencies or bodies regulate patents and trademarks?
Patent and trademark registrations must be carried out before the INPI. Patent and trademark infringement issues must be brought before the Federal Courts. Patent invalidity actions must also be brought before the Federal Courts.
As of 2018, trademark oppositions are decided by the INPI, whose rulings may be appealed to the Federal Court of Appeals. As discussed in more detail infra at 4., trademark cancellation is decided by the INPI and likewise may be appealed to the Federal Court of Appeals, except for cases involving bad faith registrations or registrations made with a view to their subsequent sale, which may only be decided by the Federal Courts.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
As a general principle, all products, substances and processes are patentable provided that they comply with the patent requirements referred to above.
As an exception, the Argentine Patent Law excludes from patentability (i) methods of treatment and diagnostic methods; (ii) preexisting biological or genetic material; and (iii) essentially biological processes.
It should also be noted that in 2012 new internal guidelines for examining chemical-pharmaceutical patent applications entered into force. These guidelines severely restricted the patentability of certain categories of inventions in the pharmaceutical field, including polymorphs, salts, esters and other kinds of selection inventions, formulations, compositions of known substances and second medical uses. The validity of those guidelines has been challenged but there is yet no case law on this matter.
Also, in 2015 the Argentine Patent Office issued specific guidelines on biotechnological inventions which provide additional guidance on how sequences, transformation events and plant and animal parts and components may be claimed.
The statutory definition of what kind of signs may be registered as a trademark is broad: any sign having distinctive capacity (section 1 of the Argentine Trademark Law).
The most relevant signs not allowed to be registered as trademarks are the following: (i) necessary or usual designations; (ii) descriptive designations; (iii) generic designations; (iv) generally used signs; (v) the necessary shape of the goods; (vi) (the natural color of the products or just one color applied to them; (vii) trademarks identical or similar to others already registered or applied for; (viii) deceptive signs; (ix) indications of local or foreign origin; (x) scandalous marks; (xi) official signs; (xii) names, pseudonyms or portraits of third parties; and (xiii) slogans lacking originality.
4. How can patents and trademarks be revoked?
Once a patent is granted, it can only be revoked through a judicial action before the Federal Courts. Broadly speaking, patents may be revoked provided that they fail to meet either of the legal requirements described above: eligibility, novelty, non-obviousness, industrial applicability, clarity, adequate disclosure (of the inventions), best mode or sufficient support.
The judicial action may be brought by anyone having legitimate interest. The invalidity action entails trial lawsuit before the federal court of first instance and ordinarily requires the appointment of at least one expert witness. The decision of the court of first instance may be appealed before the Federal Court of Appeals. A further appeal before the Supreme Court is only allowed in exceptional cases. There are no specialized patent courts in Argentina.
Trademark registrations, on the other hand, in some instances can be cancelled by INPI, but such decisions may be reviewed by the courts. Cancellation shall ensue in two situations: because the registration is invalid (nullity), or because the trademark has not been used within the prescribed terms (lapsing).
A registration is invalid if (i) it was granted contra legem; (ii) it was obtained “by someone, at the time of filing the application, knew or should have known that [the trademark] belonged to someone else”; or (iii) it was made “with a view to its subsequent sale by someone who regularly registers trademark with such a purpose” (art. 24, paragraphs a), b) and c), of the Argentine Trademark Law). The broad provision of paragraph a) (registration made contra legem) encompasses all situation where the registration was granted when it should have been refused, i.e., when the trademark was indicative, descriptive, generic, scandalous, barred by a specific reason, etc.
INPI has authority to cancel a registration on the grounds of invalidity when registration has been granted contra legem. On the other hand, only the Federal courts, and not INPI, may cancel a trademark registration obtained by one who knew or should have known that it belonged to someone else or carried out for its subsequent sale by someone habitually dealing in this activity (art. 24, sections b) and c), of the Argentine Trademark Law).
Furthermore, INPI may declare that a registration has lapsed due to failure to use the mark, even in part (i.e., in connection with specific goods or services) within five years prior to the request for cancellation, unless non-use is justified by force majeure (section 26, paragraph 1, of the Argentine Trademark Law).
INPI’s rulings to cancel a registration (either due to invalidity or non-use) may be appealed before the Federal Courts, and the appeal must be filed within 30 working days from notice. All these provisions are not operative yet and must be supplemented by specific government regulations.
5. Are foreign patents and trademarks recognized and under what circumstances?
Patent applications filed abroad enjoy a 12-month priority right under the terms of the Paris Convention. It should be noted, however, that Argentina is not yet a member of the Patent Cooperation Treaty (PCT).
Additionally, patents granted abroad may be useful for accelerating the prosecution of an equivalent patent applications pending in Argentina. In this regard, an internal regulation of INPI provides that Argentine patent applications will be considered to meet all substantial patentability requirements if it is shown that a patent has been granted abroad for the same invention by a foreign Patent Office carrying out substantive examination in a country whose Patent Law has the same substantive requirements as the Argentine law, provided the subject matter is patentable in Argentina.
To enjoy protection in Argentina trademarks must be registered with INPI. Applications filed in Argentina may, but need not necessarily, claim the 6-month Convention priority.
Exceptionally the courts have recognized some degree of protection to foreign registrations, in order to overcome a notice of opposition, or to support it, or even an injunction or a cancellation. The grounds therefor were the protection of the de facto user or foreign owner’s clientele, or bad faith in the registrant. The stipulation of section 24, paragraph b), of the Argentine Trademark Law, according to which a trademark registration may be cancelled if it was obtained “by someone, at the time of filing the application, knew or should have known that it belonged to someone else”, was introduced in 1980 and originated in case law dating back to 1961.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
No, Argentine law does not provide for any non-patent/trademark barriers to competition to protect medicines or devices. In particular, Argentine law does not provide for regulatory data protection. Moreover, there is no patent linkage in Argentina.
With regard to regulatory data protection, Art. 39.3 of the TRIPS Agreement provides that “Members, when requiring, as a condition of approving the marketing of pharmaceutical or of agricultural chemical products which utilize new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, shall protect such data against unfair commercial use.
In addition, Members shall protect such data against disclosure, except where necessary to protect the public, or unless steps are taken to ensure that the data are protected against unfair commercial use.” The extent of the protection granted by this provision, however, is still under discussion before the local courts.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
As explained supra at 3., all products, substances and processes are patentable provided that they comply with the patent requirements referred to above.
As an exception, the Argentine Patent Law excludes from patentability (i) methods of treatment and diagnostic methods; (ii) preexisting biological or genetic material; and (iii) essentially biological processes. The INPI also introduced internal guidelines which severely restrict the patentability of certain categories of inventions in the pharmaceutical field. The validity of those guidelines has been challenged but there is yet no case law on this matter (see supra at 3.).
There are no restrictions on the types of medicines or devices that can be granted trademark protection.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
No. Argentine law does not provide for the registration of license agreements. As an exception, certain license agreements may be registered before INPI for tax purposes, although the tax benefits offered by the Technology Transfer Law may only be enjoyed in those cases where an Argentine resident acts as the licensee and a non-resident as the licensor.