by Ernesto Machicote

General interestJuly 20, 20230 comments 0 Likes

Patent prosecution highway in Argentina

In Argentina, there are three possible ways to request a PPH for patent applications, depending on the application’s characteristics.

1. PPH in cases claiming priority rights from prior foreign patent applications – Resolution INPI 56/2016

Once the priority application, or any foreign application claiming the same priority rights, has been granted by a foreign patent office, the applicant in Argentina may request the application of a PPH.

In this case, the AR PTO shall consider that novelty and inventive step requirements have been met, provided that the foreign patent office applies similar patentability criteria and that the claims in the AR application do not have a broader scope than those granted in the foreign patent.

The PPH request should be filed before the substantive examination is started.

2. PPH in cases not claiming priority rights from prior foreign patent applications – Resolution INPI 56/2016

This case applies to AR applications not claiming priority rights but directed to the same invention already granted by a foreign patent office. A PPH similar to case 1) may be requested by the applicant provided that the foreign application was published and granted after the AR application filing date, and that the applicant can prove that both applications are related to the same invention.

3. Priority Examination Procedure (PEP) in cases where an AR application is the first application related to an invention – Resolution INPI 112/2019

In those cases where the AR application is the first or only application to be filed worldwide for an invention, the applicant may request a PEP once the AR application has been published and after the end of the legal term for receiving third-party observations.

The PEP request should be filed along with an international search report produced by the Information Technology area of the AR PTO. As of the PEP request, Resolution 112/2019 establishes a 60-day term for the PTO to issue a resolution allowing or rejecting the PEP application.

IMPORTANT: PPH does not apply to pharmaceutical inventions that are subject to specific and restrictive patentability criteria. These criteria are usually also applied to agricultural compounds, compositions, and formulations.

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