Argentina Patent Caselaw | Patent Priority, the Disclosure of an Invention and their Effects on the Novelty Requirement
On December 11, 2019, a national appeals court in Argentina confirmed the rejection of a patent application where the applicant failed to claim a foreign priority and conflated the patent priority system and the temporary protection to patentable inventions disclosed prior to the filing date of a patent application.
The case is Jeyes Group Limited v. Instituto Nacional de la Propiedad Industrial, where Jeyes Group Limited tried to claim the benefit of a provision in the local patent law providing the temporary protection of previously disclosed patentable inventions, and inspired by article 11 of the Paris Convention, upon filing a patent application after the priority period had expired.
The court found that the Argentinian patent office was right in refusing the patent application because the invention lacked novelty due to the prior publication of an application whose priority the applicant failed to claim in due time, and confirmed both the patent office’s and the lower court’s conclusion as to the fact that subject grace period and the priority period were not to be conflated.
According to the court’s ruling, whereas the applicant had been entitled to a priority right of twelve months, counted as from the filing of a patent application in the United Kingdom on November 2, 2000, it had lost such right by filing the subsequent Argentinian application on June 2, 2003. Furthermore, the applicant was also incorrect in trying to claim the grace period prescribed in the Argentinian patent law, regarding the disclosure of an invention within a year prior to the filing date of the application, since such grace period is limited to disclosure taking place in official or officially recognized exhibitions, and does not apply to the prior publication of the patent application.
Therefore, the publication of the patent application originating the priority, on May 2, 2003, and the tardiness in filing the patent application in Argentina destroyed the novelty of the invention regarding the latter.
Click here in order to request a copy of the court’s ruling.
