Important news and changes in Trademarks, Patent and Industrial Design Laws.
A Presidential Decree published on January 11, 2018, has introduced procedural changes regarding patents, trademarks and designs applications and registrations. As a consequence, laws 24481 (patents and utility models), 6673/63 (industrial designs) and 22362 (trademarks) are amended.
The more relevant changes are the following:
- Oppositions are decided by the Trademark Office, and not by the Federal Courts as up to now.
- The one year term from when the opposition was notified, that the applicant had to reach a settlement with the opponent is reduced to 3 months, after which the Trademark Office decides the case.
- A declaration of use of the registered trademark must be filed at the fifth anniversary of the registration.
- Partial cancellation for lack of use of a registered trademark is now foreseen according to an administrative procedure before the Trademark Office.
- Decisions of the Trademark Office may be appealed before the Federal Courts.
Patents and Utility Models
- It is no longer required to file the certified copy of the priority application; however, the examiner may require it when carrying out substantive examination.
- The term for filing formal drawings will be shortened from 90 to 30 days.
- The term for converting a patent application into a utility model application or vice versa will be shortened from 90 days to 30 days from filing date or from receiving a request from the PTO.
- The term for filing the response to the preliminary examination will be shortened from 180 days to 30 days.
- The term for paying examination fee in patent applications will be shortened from 3 years to 18 months from filing date.
- Utility models must comply with absolute novelty and industrial application.
- The term for paying Examination fee in utility models will be shortened from 3 years to 3 months from filing date.
Industrial Models and Designs
- Handcrafted objects are included.
- Novelty will not be affected by any disclosure act made by the author or assignee within 6 months prior to filing date or the priority application.
- Up to 20 industrial models or designs will be accepted in a single application, provided they are applied to products that are within one same class in the Locarno Classification for Designs and Industrial models.
- One or more divisional applications will be allowed.
- It is no longer mandatory to file a description and digital reproductions are allowed.
- Renewals must be filed within 6 months prior to the expiration date or within 6 months after this date, with an additional official fee.
- A denegatory decision must be appealed before the PTO and appealed before the Federal Courts only once the administrative path has been exhausted.
- The publication of grant can be delayed upon request of the applicant for a maximum term of 6 months as from the registration date.
- A patent application or utility model can be converted into an industrial design or model.
Furthermore, the Decree determines that the Patent Office will issue the implementing regulations applicable to trademark, patents, utility models and designs applications in order to facilitate, accelerate and simplify their prosecution.
It will now be necessary to await the issuance of the implementing regulations in order to be able to determine how these amendments will be implemented and to which extent, if any, will they affect the pending applications.