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Patent Prosecution Highway in Argentina. New Resolution 56/2016

On September 19, 2016, the Argentine Patent and Trademark Office (ARPTO) issued a resolution that will allow patent applicants the option to request accelerated examination of a patent application.

New resolution 56/2016, based on prior Resolutions ARPTO N° P-263/03 e INPI N° P-125/09, instructs the National Patent Administration (ANP) to consider as approved the requirements of section 4 of law 24.481 (T.O. 1996) regarding absolute novelty, inventive activity and industrial application and consider as done the international search of antecedents when the priority invoked under the terms of section 4 A1 of the Paris Convention has been granted by a foreign Office having similar patentability standards and provided the application complies with the Argentine Law.

The same applies when no priority has been invoked but proof is provided that a patent has been granted for the same invention after the date of filing the application in Argentina, and published after the date of filing the application in Argentina.

The basic conditions to be met by an application in order to be eligible for granting under this Resolution are:

The scope of the claims of the application filed in Argentina should be identical to or narrower than that of the selected foreign patent and, as of the filing date in Argentina, there should be no Argentine prior art documents, and no foreign prior art documents in the case of applications not claiming any priority.
The subject matter claimed in the local patent application should not fall under the patentability exclusions established in the Argentine Law.
The novelty of this Resolution, as compared to previous rules, is that now the owner of a pending patent application may voluntarily submit, prior to the substantive examination report, a petition for the application of this Resolution to the case on file. To this end, Applicant should accompany the adjusted claims with a copy of the claims of the granted patent, with its corresponding translation into Spanish. The petition for application of this resolution will be made by means of a special Form. The Argentine Patent Office is required to issue its decision within 60 days of filing of said petition.

The benefit of invoking this new Resolution is that Applicants waiting for substantive examination of an application may have the ARPTO issue a decision within 60 days.

Resolution 56/2016 will enter into force on October 15, 2016.

Carmen Sánchez-Puelles