Patents, trade marks, copyright and designs in Argentina: overview

A guide to intellectual property law in Argentina. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the patents, trade marks and designs Country Q&A tool.

This Q&A is part of the multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.

Gloria Montaron Estrada, María Luisa Santa Maria and Verónica M Canese, O'Farrell & Mairal
Contents

Patents

1. What are the legal requirements to obtain a patent?

Patents can be granted for any invention that complies with the following requirements (Patent Law No. 24.481):

  • Novelty.

  • Inventive activity (that is, the invention is not obvious).

  • Industrial applicability (that is, it has utility).

 
2. What categories are excluded from patent protection?

The following cannot be patented (Patent Law):

  • Scientific theories and mathematical methods.

  • Business methods.

  • Software.

  • Diagnostic and therapeutic methods applicable in the human body, and those related to animals.

  • Any kind of living matter or substance already existing in nature.

  • Biological and genetic material existing in nature.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

Patent applications must be filed with the Patent Office of the National Institute of Industrial Property (Instituto Nacional de la Propiedad Industrial) (INPI) (www.inpi.gov.ar).

Once a patent application is filed, the following steps are taken:

  • The Patent Office makes a formal examination and publishes it within 18 months from the filing date. Within 60 days from publication, third parties can file observations and documentary evidence.

  • The applicant can request a substantive examination. If this is not done within three years from the filing date the application is considered abandoned.

If the application meets all formal and substantive requirements, the patent is granted.

If the Patent Office rejects the patent application, the applicant can file a petition for reconsideration with the Patent Office's Board. If this petition is rejected, the applicant can appeal the decision to the federal courts.

 
4. On what grounds and when can third parties oppose a patent application?

Third parties have 60 days from the publication date to file observations and documentary evidence. Third parties can only file observations concerning whether the application meets patentability requirements.

 
5. When does patent protection start and how long does it last?

The Constitution expressly provides that the inventor is the exclusive owner of his invention. The Supreme Court has stated that this right of the inventor arises at the same time as the invention, and not with the granting of the patent, which only regularises and protects that right.

 
6. On what grounds can a patent infringement action be made?

Once a patent is granted, it is not possible to request its cancellation before INPI. The validity of patents can only be challenged with the federal courts.

Patents can be challenged as invalid for:

  • Lack of:

    • novelty;

    • inventive step (obviousness);

    • written description; and

    • clarity.

  • Not otherwise complying with the provisions of the Patent Law.

Actions requesting the invalidity of a patent can only be filed by those with a legitimate interest (for example, a defendant can file a counterclaim requesting the nullity of a patent in an infringement action).

Patents can also be cancelled when either:

  • The patent-holder fails to pay the annual maintenance fee.

  • A compulsory licence is granted to a third party and that party does not make use of the invention within two years from the grant of the licence for causes attributable to the patent-holder.

 
7. Which courts deal with patent infringement actions?

Patent infringement and validity cases are heard by the federal courts with jurisdiction over the:

  • Defendant's domicile.

  • Place where the infringement takes place.

 
8. What are the defences to patent infringement actions?

The most frequent defences in patent infringement actions are:

  • Non-infringement.

  • Existence of a legitimate right.

  • Nullity of the patent.

  • Lapse of the patent.

 
9. What are the remedies in patent infringement actions?

The patent holder can bring a civil claim to obtain damages as compensation. Damages are assessed on the basis of the evidence submitted by the patent-holder, and take into account:

  • Lost profits.

  • Profits obtained by the infringer.

  • Price erosion resulting from an infringer's presence in the market.

  • The value of a reasonable royalty.

There are no punitive damages in Argentina.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

To apply for registration of a trade mark, the applicant must have a legitimate interest (Trade Mark Law No. 22362) (for example, have a bona fide intention to use the mark in commerce). To be granted registration, a trade mark must be a word or sign that is distinctive in relation to the particular products or services it identifies.

 
12. Is it necessary or advisable to register trade marks?

In principle, exclusive rights in a trade mark are acquired through registration, irrespective of whether or not it has been used in business. A trade mark registration provides evidence of the registered mark's ownership and validity and its owner's exclusive right to use it.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The Trade Mark Office of INPI registers trade marks in Argentina.

Once an application is filed:

  • The Trade Mark Office conducts an examination on formal grounds in about two months.

  • About two months after the application, the application is published in the Trade Mark Gazette.

  • There is a non-extendable period of 30 days after publication to file oppositions to the application (see Question 15).

  • The Trade Mark Office conducts an examination on substantive grounds in about 12 months.

If an application does not encounter any opposition or official objection, it is likely to be registered in about 15 months from the filing date (this is not an official time limit, but rather the amount of time that such applications usually take in practice).

If oppositions are encountered, they automatically block the prosecution of an application and can only be overcome by reaching a friendly settlement with the opponents, or proceeding with pre-trial mediation proceedings and afterwards litigation. Otherwise, the application is considered abandoned.

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

To be granted registration, a trade mark:

  • Must not be identical or confusingly similar to others already registered or applied for by third parties for the same or overlapping products or services.

  • Must not be generic, descriptive, deceptive or otherwise fall within the prohibitions of sections 2 and 3 of the Trade Mark Law.

 
15. On what grounds and when can third parties oppose a trade mark application?

As from the publication of trade mark applications in the Trade Mark Gazette, there is a non-extendable 30-day period for third parties to oppose them. Oppositions may be filed by anyone with a legitimate interest. This can be derived from not only a prior trade mark application or registration, but also prior use, notoriety, and so on.

 
16. When does trade mark protection start and how long does it last?

A trade mark registration lasts for ten years from registration. It can be renewed indefinitely for the same period of time, provided it has been used within five years prior to the expiration date:

  • In the marketing of a product.

  • In the provision of a service.

  • As a trade name for carrying out an activity.

 
17. On what grounds can a trade mark infringement action be made?

To bring an infringement action, the claimant must either:

  • Be the owner of a registered trade mark.

  • Have used the infringed mark during a period of time long enough to have an established clientele.

An infringement action can be brought in the following cases:

  • Counterfeiting or fraudulent imitation of a registered trade mark or trade name.

  • Use of a counterfeit or a fraudulently imitated registered trade mark or trade name, or one belonging to a third party without his consent.

  • Offer for sale or sale of a counterfeit or fraudulently imitated registered trade mark or trade name, or one belonging to a third party without his consent.

  • Offer for sale, sell or otherwise market products or services under a counterfeit or fraudulently imitated registered trade mark.

 
18. Which courts deal with trade mark infringement actions?

Trade mark infringement actions are heard by the federal courts with jurisdiction over the:

  • Defendant's domicile.

  • Place where the infringement takes place.

When an infringement takes place in multiple locations, the trade mark owner has the choice of court.

 
19. What are the defences to trade mark infringement actions?

The most frequent defences in trade mark infringement cases are:

  • Non-infringement.

  • Existence of a legitimate right.

  • Cancellation on grounds of non-use of trade mark on which the action is based.

  • Expiration without being renewed of the trade mark on which the action is based.

 
20. What are the remedies in trade mark infringement actions?

There are different actions against trade mark infringers that may vary depending on the nature of the infringement:

  • Pre-trial mediation proceedings.

  • Action on the merits to ensure the infringer ceases to use the trade mark and to obtain damages.

  • Precautionary measures to obtain the attachment and seizure of infringing products under sections 38 and 39 of the Trade Mark Law

  • Injunctions based on section 50 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.

  • Criminal actions.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

To obtain copyright protection the work must be:

  • An intellectual product.

  • Original.

  • Perceptible.

  • Reproducible.

 
23. Can copyright be registered?

Works are recorded with the National Register of Intellectual Property (Dirección Nacional de Derecho de Autor) (DNDA). Its website (www.jus.gob.ar/derecho-de-autor.aspx) contains all the necessary forms to comply with the different forms of protection available. Deposit with the DNDA grants:

  • A property right in the work.

  • A rebuttable presumption of authorship.

  • A definite creation date for the work.

 
24. When does copyright protection start and how long does it last?

Copyright protection lasts for the lifetime of the author, plus 70 years from 1 January of the year following the authors' death. There are specific periods of protection for certain works (Copyright Law No. 11723).

On expiration of copyright protection, works enter into the public domain. Therefore, they can be freely used, but incur fees payable to the National Arts Fund (Fondo Nacional de las Artes).

 
25. On what grounds can a copyright infringement action be made?

A copyright owner can bring a claim to:

  • Prevent the work being exploited without his authorisation.

  • Obtain an award for damages if the work is exploited without his authorisation.

  • Obtain a penal sanction against the infringer (ranging from fines to prison sentences of one month to six years' duration).

 
26. Which courts deal with copyright infringement actions?

Copyright infringement actions are heard by the national courts in civil matters with jurisdiction over the:

  • Defendant's domicile.

  • Place where the infringement takes place.

 
27. What are the defences to copyright infringement actions?

The defences to copyright infringement actions are:

  • Fair dealing or use, such as use for:

    • didactic or scientific purposes;

    • comments, criticisms or notes referring to intellectual works. This includes up to 1,000 words for literary or scientific works, or eight bars in musical works and, in all cases, only the parts of the text essential for the purpose.

  • Private use.

  • That the work is not protected, that the work is not copyrightable or that the copyright is invalid.

 
28. What are the remedies in copyright infringement actions?

The following civil remedies are available:

  • Remedies for torts under the Civil Code (for example, damages).

  • Remedies under the Copyright Law, including:

    • a special procedure for cases involving copyright infringement and civil litigation related to contracts or transactions concerning copyright matters;

    • injunctive relief, such as the suspension of the infringing work or exhibitions; the attachment of the infringing works and the proceeds derived from infringing exhibitions or works; any other measure that may help protect copyright; and registered designs.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

Industrial models or design registrations are granted to protect the appearance or shape of an industrial product, which provide it with an ornamental character. Functional designs, however, are not considered to be industrial designs. A single registration can cover up to 50 different examples of a single model or design, provided they are of the same kind.

 
31. Which authority registers designs?

Registered design applications are also filed with the Patent Office (see Question 1). The Patent Office only examines whether the application complies with formal requirements, and does not perform a substantive examination.

 
32. On what grounds and when can third parties oppose a registered design application?

There is no opposition procedure.

 
33. When does registered design protection start and how long does it last?

A registered design registration lasts for five years from the date of filing, renewable for two additional terms of five years from the date of the relevant renewal application.

 
34. On what grounds can a registered design infringement action be made?

The owner of a registered design has the exclusive right to prevent third parties from making unauthorised use of the registered design or imitations of that design.

 
35. Which courts deal with registered design infringement actions?

Infringement and validity cases are heard by the federal courts with jurisdiction over the:

  • Defendant's domicile.

  • Place where the infringement takes place.

 
36. What are the defences to registered design infringement actions?

The most frequent defences in registered design infringement lawsuits are:

  • Non-infringement.

  • Existence of a legitimate right.

  • Nullity of the design, because the registered design does not comply with the legal requirements to be considered an industrial design.

The defendant can also file preliminary objections before the courts.

 
37. What are the remedies in registered design infringement actions?

It is possible to obtain damages for infringements of registered designs (see Question 9).

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Unregistered designs are not recognised in Argentina.

 
40. When does unregistered design protection start and how long does it last?

Not applicable.

 
41. On what grounds can an unregistered design infringement action be made?

Not applicable.

 
42. What are the defences to unregistered design infringement actions?

Not applicable.

 
43. What are the remedies in unregistered design infringement actions?

Not applicable.

 

Confidential information

44. What are the legal conditions for rights in confidential information to arise?

Information is regarded as confidential when all of the following apply:

  • It is secret.

  • It has a commercial value for being secret.

  • Reasonable efforts and security measures were taken to keep the information secret.

Confidential information is protected against "unfair commercial use", including use as are result of:

  • Breach of contract.

  • Abuse of trust.

  • A third party acting to acquire non-disclosed information where that third party knew (or was grossly negligent in not knowing) that the acquisition was contrary to the law.

 
45. On what grounds can an action for unauthorised use of confidential information be made?

The following actions can be brought against the unauthorised use of information:

  • Preliminary injunctions against use or disclosure.

  • Civil lawsuits to prohibit the use of non-disclosed information.

  • Compensation for damages.

 
46. Which courts deal with actions for unauthorised use of confidential information?

The legal actions related to the use or disclosure of confidential information are heard by the civil or commercial courts, depending on the agreement on which the legal action is based.

 
47. What are the defences to actions for unauthorised use of confidential information?

The most frequent defences in unauthorised use of confidential information lawsuits are:

  • Non-disclosure.

  • Existence of a legitimate right.

 
48. What are the remedies in actions for unauthorised use of confidential information?

It is possible to obtain damages for breach of confidential information (see Question 9).

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

The regulatory authorities

National Institute of Industrial Property (Instituto Nacional de la Propiedad Industrial) (INPI)

W www.inpi.gov.ar

Main areas of responsibility. Registration of patents, trade marks and designs.

Guidance on application procedure. See Questions 3, 13, and 30. Guidance available on the website.

National Register of Intellectual Property (Dirección Nacional de la Propiedad Industrial)

W www.jus.gov.ar/derecho-de-autor.aspx

Main areas of responsibility. Registration of copyrightable work.

Guidance on application procedure. See Question 23. Guidance is available on the website.


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