Martín BENSADON, Alicia ALVAREZ, Damaso PARDO, Ignacio SÁNCHEZ ECHAÜE.

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1 Question Q233 National Group: Argentina Title: Grace period for patents Contributors: Martín BENSADON, Alicia ALVAREZ, Damaso PARDO, Ignacio SÁNCHEZ ECHAÜE. Reporter within Working Committee: Martín BENSADON Date: 22 May 2013 Questions Questions The Groups are invited to answer the following questions under their national laws. If both national and regional laws apply to a question, please answer the question separately for each set of laws. Please number your answers with the same numbers used for the corresponding questions. I. Analysis of current law and case law 1) Does your country or region provide a grace period of any kind for patent applicants? As used in these questions, grace period includes any situation where a disclosure prior to a patent filing date that would normally qualify as prior art to the patent application is disqualified as or removed from the prior art. Yes. Section 5 of the Argentine Patent Law ( APL ) provides an exemption for previous disclosures of the invention in the following terms: The disclosure of an invention shall not affect its novelty, when within ONE (1) year prior to the filing date of the patent application or, if applicable, of the recognized priority, the inventor or his lawful successors, have disclosed the invention by any means of communication or have published it in a national or international exhibition. 1

2 Thus, when the inventor discloses the invention by any means of communication or publishes it in a national or international exhibition within one (1) year prior to the filing date of the patent application, such disclosure shall not affect the novelty of the invention. Furthermore, the Guidelines of the Patent Office provide that the prior disclosure of the invention shall not affect its novelty in the following cases: (a) public disclosure of the invention against the inventor s will (e.g., due to a breach of confidence); or (b) publication of a patent application abandoned or withdrawn before the date of the publication. However, it should be noted that the Guidelines provide that the publication of both patent applications and patents shall not be considered as exemptions in the terms of section 5 of the Patent Law. Thus, publications of patent applications and patents do affect the novelty of the invention. These Guidelines could somehow limit the scope of section 5 of the Patent Law and could be therefore considered unconstitutional. However, there is no final case law on this issue up to now, but there is one case currently being tried before the Federal Courts. 2) If the answer to Question (1) is yes, please answer the following sub-questions: a) What is the duration of the grace period? One year. b) From what date is the grace period calculated? Please indicate the effect, if any, of an international filing date and/or a Paris Convention priority date. The grace period is counted as from the filing date or from the priority date, should the patent application has one. c) What types of intentional acts, disclosures, or exhibitions by the applicant (including the inventor or co-inventor) qualify for the grace period? The grace period only affects disclosures performed by the inventor or its successors in any means of communication or publications in a national or international exhibition. It should be noted that the Argentine Patent Office considers that a PCT publication does not fall within the boundaries of the grace period. Consequently, it will affect the novelty of the application. d) What types of unintentional acts, disclosures, or exhibitions by the applicant (including the inventor or co-inventor) qualify for the grace period? The current practice of the Argentine Patent Office the grace period only to the following unintentional disclosures: (a) public disclosure of the invention against the inventor s will (e.g., due to a breach of confidence); and (b) publication of a patent application abandoned or withdrawn before the date of the publication. e) What types of acts, disclosures, or exhibitions by a third party who is not the applicant, inventor, or co-inventor qualify for the grace period? Only public disclosure of the invention against the inventor s will (e.g., due to a breach of confidence). f) To the extent not already answered in Question 2) e) above, is there any situation where a disclosure by a third party who did not learn of or derive the invention from the inventor(s) can be covered by the grace period? 2

3 g) Is any type of statement or declaration by the applicant required to invoke the grace period? If yes: What are the requirements for the statement/declaration? If the disclosure was performed in a printed publication, the applicant must file a copy of the publication. If the disclosure was performed in a non-printed publication, the applicant must declare under oath where and when the disclosure occurred. If the disclosure was performed in a national or international fair, the applicant must provide evidence of his participation in the fair and declare under oath when the disclosure took place and its scope. When must the statement/declaration be filed? Simultaneously with the application. h) Is the grace period defined by a statute or regulation? If so, please provide a copy of the relevant portion of the statute or regulation. The grace period is provided by the Argentine Patent Law and the Guidelines of the Argentine Patent Office. Section 5 of the Argentine Patent Law provides: The disclosure of an invention shall not affect its novelty, when within ONE (1) year prior to the filing date of the patent application or, if applicable, of the recognized priority, the inventor or his lawful successors, have disclosed the invention by any means of communication or have published it in a national or international exhibition. The Guidelines of the Argentine Patent Office provide: 8. Non prejudicial Prior Disclosure 8.1 Section. 5 of the Argentine Patent Law (PL) establishes: The disclosure of an invention shall not affect its novelty, when within ONE (1) year prior to the filing date of the patent application or, if applicable, of the recognized priority, the inventor or his lawful successors, have disclosed the invention by any means of communication or have publicized it in a national or international exhibition. The publications of patent applications or granted patents do not fall within the considerations of section 5 of the PL and its regulation (RPL). Furthermore section 5 (RPL) provides that: Should the inventor have disclosed his invention within the year prior to the date of filing of its application, the inventor must declare it in writing, and jointly with the patent application file: a) a sample or copy of the means of communication by which the invention was disclosed, if it were a graphic or electronic means. b) a mention of the means and its geographical location, of the disclosure and of the date on which it was disclosed, if it were an audiovisual means. 3

4 c) an authentic record of the inventor s or the applicant s participation in the national or international exhibition where the invention was disclosed, its date and the scope of disclosure. Applicant s declaration will be considered as an affidavit, and in case of falsehood, he shall forfeit the right to obtain the patent. 8.2: There are three specific cases where an early disclosure of the invention will not be taken into consideration as part of the prior art, i.e.: when disclosure is due to or resulting from: (i) (ii) (iii) clear abuse against the applicant or his successors, for example the invention was derived from the applicant and disclosed against the applicant will, or the disclosure of the invention by the applicant or his successors by any media or display in a national or international exhibition, within the terms of Sections 5 of the Patent Law and the Regulatory Decree of the Patent Law, or the publication by the National Patent s Administration of an abandoned application or an application withdrawn before the date of publication, because it was not possible to stop the publication process. i) Is there any special situation where only certain types of applicants/inventors are allowed to benefit from graced disclosures? (such applicants/inventors may include SMEs, universities, individuals, etc.) No. Policy 3) If your country or region provides a grace period for patents, please answer the following sub-questions: a) What are the policy reasons behind this grace period? The policy reason behind the grace period is to protect the inventor against unintentional disclosures. b) Is the grace period, as it currently exists in your country or region, considered useful? The grace period currently has a limited use due to its narrow scope. The fact that PCT publications do not fall within the scope of the grace period serious jeopardizes it usefulness. c) Is the grace period considered more useful for a certain class of stakeholders (for example, individuals, universities, small businesses, or large businesses)? No. d) How often is the grace period used? If you are unable to provide a quantitative answer to this question, please indicate one of: often; occasionally; or almost never. Occasionally. 4) If your country or region does not provide a grace period for patents, please answer the following sub-questions: 4

5 a) What are the policy reasons behind not providing a grace period? b) Would a grace period be useful for stakeholders in your country or region? c) Would a grace period be considered more useful for a certain class of stakeholders (for example, individuals, universities, small businesses, or large businesses)? 5) What are the positive aspects of the grace period law of your country or region? The only positive aspect of the Argentine grace period is its length: one year. 6) What are the negative aspects of the grace period law of your country or region? The grace period in Argentina is too narrow to provide an adequate protection to the inventor since PCT publications are considered not to fall within its scope. 7) As a practical matter, are the procedures and strategies of patent applicants in your jurisdiction affected by the grace period laws of other countries or regions? If so, in what way? Not really. II. Proposals for harmonisation The Groups are invited to put forward proposals for the adoption of harmonized laws in relation to grace periods for patents. More specifically, the Groups are invited to answer the following questions without regard to their national laws. 8) In your view, and assuming a proper balance is struck between the rights of the applicant and the rights of the public at large, is a grace period for patents desirable? Yes. 9) Is harmonization of laws relating to grace periods for patents desirable? Yes. 10) Please provide a standard that you consider to be best in each of the following areas relating to grace periods: a) The duration of the grace period One year. b) The date from which the grace period is calculated The grace period should be counted as from the filing date of the priority. c) The types of intentional acts or disclosures by the applicant (including the inventor or co-inventor) that should be covered by the grace period We consider that all and every disclosing act should be covered by the grace period. 5

6 d) The types of unintentional acts or disclosures by the applicant (including the inventor or co-inventor) that should be covered by the grace period We consider that all and every disclosing act, either intentional or unintentional, should be covered by the grace period. e) The types of acts or disclosures by a third party who learned of or derived the invention from the applicant that should be covered by the grace period We consider that all and every disclosing act, either by the inventor or a third party, should be covered by the grace period. f) The types of acts or disclosures by a third party who did not learn of or derive the invention from the applicant that should be covered by the grace period We consider that acts or disclosures by a third party who did not learn of or derive the invention from the applicant should not be covered by the grace period. g) The requirement for and content of any statement/declaration by the applicant to invoke the grace period We consider that the applicant should only provide a declaration without any further evidence of the disclosure. 11) The Groups are invited to comment on any additional issue concerning grace periods for patents that they deem relevant. Summary The Argentine Patent Law provides for a limited grace period. The grace period is applicable when the inventor discloses the invention by any means of communication or publishes it in a national or international exhibition within one (1) year prior to the filing date of the patent application, such disclosure shall not affect the novelty of the invention. However, the Argentine Patent Office restrictively interprets the grace period so as not to cover PCT publications. We consider that the policy reason behind the grace period is to protect the inventor against unintentional disclosures. Thus, and in order to fulfill this purpose, an effective grace period should encompass all and every disclosing act, either intentional or unintentional during one (1) year counted as from the filing date of the priority. 6