November 15, 2018

Argentina introduced a new prosecution scheme for utility models

On November 9, 2018, Decree No. 280/2018 issued by the Argentinian National Institute of Industrial Property (INPI) came into effect. The Decree concerns the prosecution of utility models and complements other major IP reforms, which have been initiated in Argentina over the course of 2018.
Accordingly, the filing date of a utility model application is established on the date that the INPI receives a filing request, a document identifying an applicant, a description, and a set of claims. The documents must be provided to secure the filing date, even if they do not meet the formal requirements.
If disclosure of the utility model has taken place within 12 months before the filing date, it is necessary to submit a corresponding declaration together with the filing documents. Besides, if conventional priority is claimed, the applicant should also indicate the country and the priority date at the stage of filing. To confirm the priority right, the applicant should provide the INPI with a priority number, a priority document, an assignment document (if applicable) as well the sworn translation of the priority document into Spanish within three months from the filing date.
Upon filing a utility model application, the applicant will have 30 calendar days to submit an abstract and, if needed, any other documents, to introduce corrections or amendments provided that they are not out of the initially requested scope of protection. If the abstract is not submitted within the stipulated term, the application will be rejected. Later on, the applicant will be able to make amendments only on examiner’s demand.
The examination fee must be paid within three months from the filing date. As soon as it is paid, the INPI starts the substantive examination of a utility model application. If the application does not comply with any legal requirements, the INPI will send an Office Action to the applicant, who will have a non-extendable term of 30 days to submit a response. The INPI may issue two Office Actions before the final decision.
As soon as the application meets the legal requirements, it will be published in the official electronic bulletin. Any third party may file an objection within 30 days from the publication date. In case of any objections filed, it will be sent to the applicant for making clarifications within 30 days. If no objections are filed, the utility model will be granted.
Before the issuance of the Decree, the applications for utility models were under consideration for a substantial amount of time, as the procedural schemes were the same as for the patents. The lengthy process was arguably too long; therefore applicants were less likely to be interested in utility model protection for their innovations. The new prosecution scheme is believed to considerably shorten the term for obtainment of utility model patents in Argentina, therefore, making them more attractive to applicants.

Author: Jessica Chester