11 May 2021
We are glad to share with you this guideline about third party observations in connection with patent prosecution in Argentina.
Briefly, we highlight that:
a. Third parties are only entitled to file observations.
b. Observations are admitted only during the prosecution.
c. PTO has to serve notice of the observation to the applicant.
d. Once the patent has been granted, third parties are only entitled to file a cancelation action before courts.
Bearing in mind these four items, we are going to approach them to let you get an overview about how observations work in Argentina (AR).
Let´s start pointing out that only “observations” are available in AR; which means that “oppositions” are not. Therefore, third party´s activity is limited “to file” the observation; therefore, there will not be proceedings between the applicant and the third party.
The next steps are who, how and when observations can be filed.
As regards the “who” there is no limitation upon it. Any third party, even anonymously throughout another person, is entitled to file an observation. From every day practice, we can say that sometimes competitors try to keep themselves out of sight, by having their patent counselors filing observations without disclosing the name of whom they are working for.
In connection with the “how” it is important to know that observations have to be based on the absence or inadequacy to the legal requirements, e.g., mainly novelty, inventive step, industrial applicability, as well as clarity. It is admitted to support the grounds by filing documents, if any. Therefore, the grounds of the observation have to be explained in detail and clearly, since the stronger the grounds are, the more chances that the application is rejected based on the observations are. On the contrary, if the observation is deemed groundless to the examiner, it could be dismissed at once.
As regards “When” does it need to be filed, the answer is within 60 running days upon publication of the patent application. It could be filed later, but the consequences will be different, as we will see immediately.
Finally, if the observation is filed within the legal term and it is duly grounded, then it will be mandatory for the examiner to study and report it at the substantive examination report. Thus, the applicant will have the burden of answering the observation properly. Once again, the role of the third party starts and finishes with the filing of the observation; no other active participation will derive from the filing of the observation.
In Argentina, an observation can be filed against a patent application, as long as it does not meet some of the patentability requirements – novelty, inventive step and industrial application – or does not meet legal requirements, for example clarity.
On the contrary, if it is filed once the term has expired -but before granting- the examiner is neither compelled to report it nor to notify it upon the applicant; in that scenario, third parties would have at least the chance to ring the bell on the examiner.
Once the patent has been granted, third parties are entitled to file a judicial nullity action which requirements, timeframe and costs are -as any judicial action in AR- harder than those proceedings before the PTO.