Starting on January 1, 2018 the order in which patent applications are to be studied by the PTO will depend on the applications´ filing date

Until know, the order of examination of patent applications was based on the date in which the corresponding examination fees were paid. While applicants will continue to have three years counted as from the filing date to pay the examination fees, starting on January 1, 2018 the date on which said fees are actually paid will no longer determine the order in which applications are examined which will now depend on the application´s actual filing date.

Use of Internal PPH mechanism successfully accelerates grant of patent applications

On October 15, 2016 Resolution 56/2016 also called “internal PPH” entered into force. This Resolution allows applicants to adapt the claim set of a pending Argentine patent application to that of any foreign granted equivalent patent which has undergone examination among other requirements. Once the petition is filed it is analyzed, and if found in order, the Argentine patent application is granted within 2 months. In the last months we have filed an important number of PPH requests which have derived in granted patents quickly. We highly recommend applicants interested in accelerating the prosecution of their applications to use this mechanism.

The PTO increases official fees

Official fees for all services will be increased by the PTO in two stages.

The first one will begin on August 10, 2015 and contemplates an increase of 15%. The second one will start on October 1, 2015 and will add an additional increase of 10%.

Exceptionally, in the case of trademark oppositions the total increase will be in the vicinity of 45%.

PTO publishes Disposition 125 with list of patent applications abandoned for non-compliance with Resolution 187

The PTO has recently published in the Official Gazette Disposition 125 with the list of patent applications that have been declared abandoned for failure to comply with the requirements of Resolution 187.

A 60 day term has been opened to request the revival of any case included in such list.

The due date for requesting such revival will lapse on February 17, 2015.

Translation into Spanish of trademark priority documents

The Trademark Division of the PTO has issued a communication in which it informs that beginning on July 15, 2013 it will start requesting a Spanish translation certified by a local chartered translator of all priority documents written in a foreign language.

Recently, the Design Division of the PTO also began requesting certified Spanish translations of priority documents which, in the case of the Patent Division, were being requested since mid-2011.

From now onwards this requirement will be common to all trademark, design and patent proceedings.

Translation into Spanish of design priority documents

As of last week, the Design Division of the PTO has started requesting the filing of a certified Spanish translation made by a local chartered translator of all priority documents.

Since 1963 it was understood that said translations were not needed in those cases in which, even if written in a foreign language, the name of the applicant as well as the priority date and number could be easily ascertained from the priority document. Only in those cases in which, for example, Cyrillic, Korean, Chinese or Japanese characters were used the filing of a plain English translation thereof was requested.

This sudden change of what was an accepted practice for more than 50 years was not previously informed to practitioners. The PTO has started requesting the above mentioned  Spanish translations by means of the issuance of Office Actions in all pending applications.

We have consulted with the Design Division of the PTO regarding this matter and the change in practice has been confirmed.

Therefore, all applicants must from now onwards lodge a certified Spanish translation of all priority documents filed with said Division.

Increased PTO fees become applicable

Starting today, July 1, 2013 the new increased PTO fees become applicable for all proceedings including the filing of new TMs, designs and patents.

Should you wish to receive the new PTO schedule of fees please let us know.

PTO issues new guidelines for the examination of patent applications in the chemical and pharmaceutical fields

On May 8, 2012 Joint Resolution 118/2012, 546/2012 and 107/2012 issued by the PTO and the Ministries of Industry and Health containing new standards for the evaluation of patent applications in the chemical and pharmaceutical fields was published in the Official Gazette.

Said Joint Resolution deals, among other topics, with Markush claims, selection patents and polymorphs.

The Joint Resolution establishes that the new criteria will be applicable immediately even to pending cases.

Since the Patent Agents were not consulted prior to the issuance of this Resolution there is no hint as to how the PTO will apply same.

Most of the contents of the Joint Resolution are unconstitutional since they contradict norms and laws which according to our legal system have higher hierarchy and carry more weight.

PTO issues Resolution 178/2011 declaring the abandonment of patents

The PTO has issued Resolution 178/2011 by which it declares the abandonment of all granted patents and utility models for which annuities have not been timely paid within the prescribed time frame to do so or within the corresponding 6 month grace period.

The Resolution further states that as of the last publication of said Resolution, which took place on December 21, 2011, a 10 working day term will be provided to appeal the abandonment decision. For the appeal to prosper and the abandonment to be reversed patent owners will have to show that the annuities were indeed timely paid and will have to furnish copies of the corresponding payment receipts.

The due date for filing the appeal will lapse on January 4, 2012.

Holiday Season Greetings

We take this opportunity to wish all our friends and colleagues from around the world a happy and joyful holiday season, a Merry Christmas and a very good start for the New Year. May 2012 be full of success and accomplishments!