Argentina Argentine Argentinien Report Q193 in the name of the Argentinian Group Divisional, Continuation and Continuation in Part Patent Applications Questions I) Analysis of the current law 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? Only divisional applications are available under AR patent law. There are no legal provisions allowing continuation or continuation in part applications. 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? Mainly, due to lack of unity of invention, but applicants may decide to divide their applications for other reasons. 3) Under what circumstances and conditions may divisional, continuation and continuation in part applications (or combinations thereof) be filed in your national or regional patent system? According to Art. 17 of the Patent Act, patent applications should not comprise more than one invention. In case of applications not complying with Art. 17, AR PTO will request the division of the application within a 30 day term as of the date of the request. Otherwise, the application will be deemed as abandoned. In addition, any application can be voluntarily divided up to the date of the notice of allowance of the parent application (Guidelines for Patent Examination Part A Chapter III Par. 2.4). The granting procedures for divisional applications are similar to the ordinary ones. 4) Are cascades of divisional, continuation and continuation in part applications allowed, i.e. is it possible to file a divisional, continuation or continuation in part application on the basis of another divisional, continuation or continuation in part application? There are no limitations in AR patent regulations for filing divisional applications derived from previously filed divisional applications. They are expressly accepted according to the provisions of the above referred to Guidelines for Patent Examination (see Part C Chapter VI Par. 8) 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? They may be filed anytime since the parent application is filed, provided that the latter is still pending (see Guidelines cited above). In those cases where the AR PTO requests the division of an application due to multiple inventions, divisional applications can be filed only within 30 days as of the date of the request. 1
6) Is it a requirement for filing an application that is a divisional, continuation or continuation in part of an original application (or of another divisional, continuation or continuation in part thereof) that the original application (or the direct parent application, or both) is still pending at the time of filing of the divisional, continuation or continuation in part application? Yes, it is a requirement that divisional applications are filed anytime while the original application is pending. 7) Is it a requirement that the original application (or the direct parent application, or both) is still pending throughout the prosecution of a divisional, continuation or continuation in part application derived therefrom? Once filed, divisional applications have an independent granting procedure. Nevertheless, the Guidelines for Patent Examination cited above, advise patent examiners to carry out the substantive examination simultaneously, in order to avoid any overlapping between claims of parent and divisional applications. 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? There are no restrictions as to what may be included in a divisional application, but for new matter (see Answer 9). 9) In particular, may the description and/or claims contain or claim matter that was not contained or claimed in the original application, or other application from which the divisional, continuation or continuation in part application derives? No new matter can be included or claimed in a divisional application that was not contained in the parent application as originally filed (Art.19 Decree 260/96 and Guidelines Part C Chapter VI Par. 8). 10) Is it possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter, to the extent the addition of new matter is allowed? Patent terms for divisional applications are 20 years counting from the filing date of the parent application (see Guidelines Part A Chapter VII Par. 4.4.3). 11) Is double patenting permitted or must the matter claimed in divisional, continuation or continuation in part applications be deleted from the claims of the original application, or other application from which the divisional, continuation or continuation in part application derives? No double patenting is permitted according to AR regulations. No overlapping of claims will be accepted between parent and divisional applications. (see Answer 7). The objects claimed in parent and divisional application should be clearly distinct (see Guidelines Part C Chapter VI Par. 8.6) 12) Does it matter in this respect whether the divisional, continuation or continuation in part application was filed in response to a restriction requirement issued by the patent granting authority? AR regulations make no difference in this respect. 2
II) Proposals for adoption of uniform rules 1) In the opinion of your National or Regional Group, what are the advantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? The divisional application provisions afford applicants adequate protection in complex and not so complex inventions to separately protect multiple inventions originally comprised in only one application. Another advantage is the enabling of separable inventions to be subject of individual patents. This way, third parties can discriminate related inventions without having to sift through extensive and complicated disclosures. A cost advantage is that applicants may file a single application at an early stage covering several inventions and defer decisions on divisional applications to a later date. A further advantage is to foster full disclosures; if an applicant realises at a later date the importance of a feature in his disclosed invention he would not be exposed to forfeiting a divisional claim because of his earlier disclosure. Divisional applications also allow applicants to pursue independently the grant of claims that would not raise objections by the Patent Office, and discuss the more debated matters in a separate application. 2) In the opinion of your National or Regional Group, what are the disadvantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? Divisional applications are provided as a remedy; disadvantages arise when the remedy is misused or abused, such as when the claims of a divisional application are inadequately supported by the parent application, misguiding third parties relying on the disclosure, or when attempting to have rejected subject matter reexamined (there are other regulated ways of having an unsatisfactory decision of the examiner reconsidered). In any event, the term of 20 years as from the filing date of the parent application limits the possibility of applicant to divide its application indefinitely. 3) In the opinion of your National or Regional Group, should the filing of divisional, continuation or continuation in part patent applications, respectively, be permissible? Yes, filing of divisional applications should be permitted. 4) If international harmonisation were to be achieved in respect of the rules governing divisional or continuation patent applications, what should be the common rules in respect of the circumstances and conditions in which divisional, continuation or continuation in part applications may be filed? As a general rule, divisional applications should be allowed at any time during prosecution while the application is still pending, even in cases where there was a rejection of the application and such rejection was appealed by applicant. Divisional applications should be accepted either at the requested of PTO or by initiative of applicant, as provided for by the Paris Convention. 5) In particular, should a harmonised system permit the addition in a divisional, continuation or continuation in part application of matter that was not contained in the original application as filed? No new matter should be included in divisional applications. 3
6) Should it be permitted to use a divisional, continuation or continuation in part patent application to obtain new examination and decision of an application that contains claims that are identical or essentially identical with claims finally rejected in the course of the prosecution of the parent application? Should there be an exception where case law on the substantive conditions for patent grant of the patent granting authority has changed since the parent application was rejected? Would this possibility adequately take into account the interests of third parties in legal certainty? No. The res judicata principle should apply. 7) Should it be possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter? No, we consider that the 20 year term as of the filing date of the parent application limits the eventual misuse of divisional applications. 8) In the opinion of your Group, would it be justified to limit the access to filing divisional, continuation or continuation in part applications primarily with the object of limiting the backlog of patent granting authorities? No, the backlog of the patent granting authorities is not a justification to limit divisional application filings. 9) In the opinion of your Group, would it be desirable, in the interest of legal certainty of third parties, if databases of patent granting authorities ensured that a clear link was always indicated between original patent applications and all divisional, continuation or continuation in part applications derived therefrom? Yes, databases should clearly indicate the link between original and any later application derived therefrom. National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. Summary In Argentina, divisional applications may be filed at any time during prosecution. No provision allows the filing of Continuation or Continuation in Part applications. The Patent Office will request the division of applications comprising more than one invention, while applicants may voluntarily decide to divide their applications for the same or other reasons. There are neither limitations for filing divisional applications derived from previously filed divisional applications nor restrictions as to what may be included in a divisional application, but for new matter. Résumé En Argentine, les demandes divisionnaires peuvent être présentées pendant n importe quel moment de la démarche d une demande de brevet d invention. Il n existe pas de normes qui permettent le dépôt des demandes de Continuations ou Continuations en partie. 4
L Office des Brevets d inventions demandera la division des dépôts comportant plus d une invention, tandis que les demandeurs, peuvent, pour d autres raisons, volontairement décider cette division. Pour les dépôts des demandes divisionnaires dérivées des demandes divisionnaires antérieures, il n existe pas de limites ou de restrictions sur la matière qui peut être inclue dans une divisionnaire, à l exception d une matière nouvelle. Zusammenfassung In Argentinien Divisionsaufträge können im jeden Moment der Verfolgung von dem Mutterauftrag an gemeldet werden. Es gibt keine Weiterführungaufträge (Continuation) oder Teilweiterführungaufträge (Continuation in Part). Das Patentamt wird beantragen dass man Divisionsaufträge anmeldet wenn sie mehr als eine Erfindung enthalten, aber die Antragsteller können auch ihre Aufträge auf dem selben Grund oder auf andere Gründen dividieren.es gibt keine Beschränkungen um Divisionsaufträge aus früher angemeldete Aufträge anzumelden, und es gibt auch keine Beschränkungen über den Inhalt von einem Divisionsauftrag, nur kann man keine neue Information oder kein neues Thema beifügen. 5