The recodification of the law also effected a number of other changes, not all of which seem to be in accord with Argentina's obligations under the GATT-TRIPS agreement. Among these are the following:
1) an ambiguous provision has been inserted in connection with parallel imports, apparently intended to confine the first sale doctrine to sales made in Argentina;
2) ex officio licenses can now be granted by any of the ministries of Economy, Health or Defense and compulsory licenses can be granted if there is insufficient distribution and trading to satisfy the national market under reasonable trading conditions. A prospective compulsory licensee must be able to show that it has the technical and commercial ability to satisfy the market under reasonable trading conditions.
2) ex officio licenses can now be granted by any of the ministries of Economy, Health or Defense and compulsory licenses can be granted if there is insufficient distribution and trading to satisfy the national market under reasonable trading conditions. A prospective compulsory licensee must be able to show that it has the technical and commercial ability to satisfy the market under reasonable trading conditions.
The implementation decree for the new law has also come into effect. Among its provisions are the following:
1) if an applicant wishes to take advantage of the one-year
grace period that exists having regard to the prior art
effect of its own publications, a sworn declaration
giving details of that publication must be filed at the
time of filing the application, together with a copy of
the publication in question;
2) for applications relating to microorganisms, or relating to inventions that require the use of microorganisms that are not publicly known, deposit of the microorganism is required;
3) pending patent applications claiming priority from a date after January 1, 1994, that relate to the production of pharmaceutical products may be amended into applications claiming the pharmaceutical product itself. If this is done, examination will be carried out although the grant of a patent will be delayed until November 1, 2000. Provision is, however, made for the grant of interim rights under Article 70.9 of GATT-TRIPS for the period before the grant of the patent. Third parties who have commenced exploitation or who have made substantial investment to do so may be able to continue to practice the invention after a patent has been granted as long as they pay fair and reasonable compensation, unless the patentee guarantees to supply fully the Argentine market at the same price as was charged by the third party. If this occurs, then the patentee will be entitled to full exclusivity;
4) the decree purports to limit the possibility of securing a patent term of twenty years from filing to applications filed after November 1, 1995, and to leave older patents with the former term of fifteen years from grant. This provision is in conflict with GATT-TRIPS and the practice that was followed from November 1, 1995, to March 31, 1996, during which period petitions for extension of old law patents up to a duration of twenty years from filing were being accepted. Further action on this issue seems likely;
5) a six-month grace period for excusal of prior publications by the inventor is established for utility model applications.
2) for applications relating to microorganisms, or relating to inventions that require the use of microorganisms that are not publicly known, deposit of the microorganism is required;
3) pending patent applications claiming priority from a date after January 1, 1994, that relate to the production of pharmaceutical products may be amended into applications claiming the pharmaceutical product itself. If this is done, examination will be carried out although the grant of a patent will be delayed until November 1, 2000. Provision is, however, made for the grant of interim rights under Article 70.9 of GATT-TRIPS for the period before the grant of the patent. Third parties who have commenced exploitation or who have made substantial investment to do so may be able to continue to practice the invention after a patent has been granted as long as they pay fair and reasonable compensation, unless the patentee guarantees to supply fully the Argentine market at the same price as was charged by the third party. If this occurs, then the patentee will be entitled to full exclusivity;
4) the decree purports to limit the possibility of securing a patent term of twenty years from filing to applications filed after November 1, 1995, and to leave older patents with the former term of fifteen years from grant. This provision is in conflict with GATT-TRIPS and the practice that was followed from November 1, 1995, to March 31, 1996, during which period petitions for extension of old law patents up to a duration of twenty years from filing were being accepted. Further action on this issue seems likely;
5) a six-month grace period for excusal of prior publications by the inventor is established for utility model applications.
In a related change, the Argentine Patent Office has reintroduced the requirement to pay annuities (the old law had such a provision but at rates set in 1864 and the Patent Office had given up collecting them). Renewal fees will be due on all granted patents, whether granted before or after the change in the law, and after a transition period will be payable annually shortly after the anniversary of the grant date.
