Patent Caselaw | Argentina | Supreme Court Weighs in on the Temporary Protection of Disclosed Inventions
The Supreme Court, in Argentina, ruled against of Société de Conseils de Recherches Et D’Applications Scientifiques (S.C.R.A.S.) in its extraordinary appeal regarding the INPI’s refusal of patent application No. 970101003 for Pharmaceutical Compositions That Include Peptides For Sustained Release, Method For Their Preparation, Use Of A Gelifyable Peptide Salt To Prepare Drugs And Drugs Containing Them. INPI, Argentina’s patent and trademark office had determined the subject invention did not meet the novelty requirement and refused.
The applicant filed its application on March 13, 1997, claiming a “grace period” as prescribed in article 5 of Argentina’s Act 24481 (Patent and Utility Models) and arguing that prior disclosure of the invention had taken place through the publication of PCT application No. WO 97/07398, on March 14, 1996.
Source: Patentscope
The National Appeals Chamber had found that the central element to the case at hand had to do with the interpretation of article 5 Act 24481, which provided for a temporary protection of inventions disclosed within a year from the application’s filing date, through any media or exhibitions, national or international, a protection inspired by article 11 of the Paris Convention. It also found INPI was correct in refusing the patent application, based on the following facts:
The temporary protection, as prescribed both in articles 11 Paris Convention and 5 Act 24481, has a clear limitation, i.e. that it cannot exceed the priority period provide for in article 4 of the Paris Convention, that is 12 months counted as from the priority date.
Although the applicant did not claim any priority on its application, in Argentina, it did claim priorities within PCT application No. WO 97/07398, dated September 2, 1994 and March 8, 1995.
As a result, and since the refused application was filed well past the priority deadline in Argentina, the invention did fail to meet the novelty requirement by the corresponding filing date.
The Court found the applicant’s extraordinary appeal inadmissible, as it failed to dispute the National Chamber’s ruling as to its main argument that the relevant date for the purpose of establishing whether the invention met the novelty requirement or not, but based its case solely on equating the international publication to a disclosure covered under articles 11 Paris Convention and 5 Act 24481.
Although it has been fore than 50 years since the Patent Cooperation Treaty was signed, it is still not uncommon to find cases where applicants fail to consider the applicable deadline for non-PCT countries. For most of such jurisdictions, the Paris Convention remains available, yet a national application must be filed within 12 months from the priority application, as prescribed in its article 4.
Argentina is included among those non-PCT jurisdictions in the Western Hemisphere, bound by the Paris Convention, along with Bolivia, Guyana, Haiti, Jamaica, Paraguay, Suriname, Uruguay and Venezuela.
Identifying PCT and non-PCT jurisdictions, and how to proceed and schedule filings each country is certainly paramount to any successful patent procurement strategy and so is having a clear knowledge of the applicable rules for each case.
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