Utility Models
1. OVERVIEW
A utility model is a new arrangement or form obtained or incorporated in tools, working instruments, utensils, devices or known objects suitable for practical work, insofar as they make for better performance of the operations for which they are intended. The title, denominated utility model certificate, confers on the owner thereof the exclusive rights of exploitation.
This right is granted only to the new form or arrangement as defined, but a utility model certificate cannot be granted within the scope of protection of a patent of invention in force.
A process cannot be protected by a utility model, even if it refers to a novel process for manufacturing the object including the new arrangement or form. Processes can only be protected by patents.
Priority basis: first-to-file
Argentina is a party to the Paris Convention.
Argentina is NOT a member of the PCT. Consequently, the utility model application has to be filed within one (1) year from the original application (if Convention priority is invoked) or prior to the publication (if priority is not requested). If the original PCT application has already been published, the novelty will be affected, and the invention will be considered to be in the public domain in our country.
Please click here to see a utility model procedure timeline.
An invention may be protected by means of a utility model if it is novel, if it is susceptible of industrial application, and if it is clearly and sufficiently disclosed in the application.
The following are the essential requisites:
- Novelty: Absolute novelty is required. Accordingly, publication, offer for sale or public use in Argentina or abroad before the application date (or the priority date under the Paris Convention) affects the novelty. However, it is considered that the novelty is not affected when it is the applicant who makes known or discloses abroad the invention within six (6) months before the filing of the application in Argentina.
- Industrial applicability: There shall be industrial applicability where the subject matter of the invention causes an industrial result or product to be obtained, industry being understood as including agriculture, forestry, livestock breeding, fisheries, mining, processing industries in the strict sense and services.
The application must disclose the invention in a sufficient and clear way so as the invention may be reproduced by a person with skills in the specific technical field. The applicant should further disclose the best way to carry out the invention. No additional subject matter can be added to that of the originally filed in the application.
Utility models are not registrable if the working thereof within Argentina should be prevented to protect public order or morality, human, animal or plant life or health or to avoid serious damage to the environment and the entire genetic and biological matter which exists in nature.
All physical or legal entities, national or foreign with actual or legal domicile in Argentina, are entitled to obtain utility models.
The invention made by an employee in the course of his employment, contract, or during his service or labor relation, belongs to the employer if the purpose of such relation involves partially or totally inventive activities.
The applicant may mention in the application the name of the inventor or inventors and require the inclusion of the same in the publication of the application.
The utility model is valid once granted and has a duration of ten (10) years counted from the application date.
2. FILING REQUIREMENTS
Full name and address (including city, state, postal code and country of residence) of the applicant(s) must be informed at the moment of filing. In the case of natural persons, the following information must be stated in the application form:
a. ID number (e.g. passport number) of the applicant(s) and country of issuance;
b. Marital status (if married, it must be indicated whether it is a first marriage or a remarriage);
c. If married, complete name and ID number of the spouse of the applicant(s).
If there are two or more Applicants, the right will be equally divided among them unless stated to the contrary in the Application Form.
A utility model application consists of an Application Form, Cover Sheet, Specification, Drawings, Claims and Abstract. They must be filed in Spanish; otherwise, a translation into Spanish by an Argentine Sworn Translator, legalized by the Association of Translators of Buenos Aires, must be filed within the next ten (10) working days.
A description relating to a single main instance of the new configuration or arrangement of the object in practical use or of the functional improvement, with an explanation of the causal relationship between the new configuration or arrangement and the functional improvement, in such way that the invention in question can be reproduced by an average person skilled in the art, and an explanation of the drawing or drawings, must be provided.
The set of claims must define the subject matter for which protection is sought, and must be clear and concise. Said claims can be one or more and have to be based on the description without exceeding it.
The first claim is the only independent claim admitted and it must refer to the main subject matter. The remainder of the claims must be subordinated to the first one.
The claims must contain:
a. a preamble or exordium indicating from the start the same title with which the invention has been denominated, subsequently comprehending all the known features of the invention emerged from the nearest state of the art; and
b. a characteristic part where the elements establishing the novelty of the invention must be mentioned.
Although there is no limit to the number of claims that can be included in the application, where the set of claims exceeds ten (10) clauses, an additional fee must be paid for each additional claim over the first ten (10) clauses.
Voluntary amendments. From the filing date and until thirty (30) days after said date, the applicant can file complements, corrections and modifications to the utility model application, as long as no subject matter is added. After that date, voluntary amendments will be subject to the acceptance of the examiner.
The documents required for filing a utility model application in Argentina are listed below.
- Power of Attorney, notarized and legalized (by Apostille or by the Argentine Consulate) must be dated prior to the filing date in Argentina.
- If an international priority under the Paris Convention is claimed, the following are the requirements:
a. Country, date and number of the priority application
b. Priority document
c. Original or Certified Copy of Assignment of Priority Rights
2) a. Country, date and number of the priority application: The country and date of the priority application must be stated at the moment of filing the application. The application number should be provided at the moment of the filing, if available, but can be stated later on.
2) b. Priority document. It can be requested by the Examiner during the Substantive Examination stage. Should that be the case, the applicant will have three (3) months to submit the certificate in electronic or digital format. This document does not require legalization. Electronic priority documents issued by the corresponding Office as well as scanned copies of physical certificates are allowed. If the priority document is in a language other than Spanish, its Spanish translation, verified by an Argentine Sworn Translator must be filed within three (3) months from the filing date of the application in Argentina.
Some PTOs can issue bilingual priority certificates. If the priority certificate is issued in the original language and Spanish, there are no other formal requirements other than filing the certified copy of the priority certificate. If the priority certificate is issued in English, we can translate the priority certificate into Spanish ourselves and have it verified by an Argentine Sworn Translator.
On the other hand, if the PTO can only issue priority certificates in a language other than English or Spanish, then there are two options:
i. With a sworn translation from the original language to English, duly signed and stamped by the sworn translator and legalized (by Appostille or by the Argentine Consulate) in order to certify that the person who translated the document is indeed a sworn translator. Once we receive the priority document and the legalized sworn translation we can translate the latter into Spanish and have it verified by an Argentine Sworn Translator. This also applies to Assignment of Priority Rights documents.
ii. We can have the priority document translated directly by an Argentine Sworn Translator. This is usually the most expensive option since Argentine Sworn Translators specializing in languages other than English charge very high rates. This also applies to Assignment of Priority Rights documents.
2) c. Original or Certified Copy of Assignment of Priority Rights. The right to claim priority should have been assigned from the inventor(s) to the applicant(s) prior to the filing date in Argentina. Should the priority certificate be requested during the Substantive Examination stage, the applicant will have three (3) months to file the Assignment of Priority Rights document. If the Assignment of Priority Rights document is not in Spanish, then it must be filed together with a Spanish translation, verified by Argentine Sworn Translator. This document does not require notarization or legalization as long as it is the originally signed document.
i. If the priority application was filed by more than one applicant, the signature of only one of them is sufficient to assign the priority rights of the application.
ii. The assignment form provided above has retroactive effects. If this form is not used, it should be noted that the assignment must be dated either prior to the filing date of the application in Argentina, or the priority date, whichever is later.
iii. If the title of the invention is stated in the assignment document instead of the application number, then the ARPTO will issue an office action requesting a new assignment document.
If the above requirements are not complied with, the right of priority will be lost.
If the invention was previously disclosed no more than a year before the application date, the applicant must declare such disclosure in the application form and submit with this:
a copy of the means of communication by which it was disclosed;
i. in the case of an audiovisual medium: declaration of date, medium and geographical location;
ii. if the invention was exhibited: evidence of participation in the event.
3. PROCEDURE
An official search may be requested at the ARPTO based on bibliographic data (for instance, priority) or a topic.
On the other hand, a utility model surveillance about either a subject within a specific technological field or an organization such as a competitor may also be requested at the ARPTO. This service consists of a one-year term of utility model surveillance; the PTO will provide three (3) reports with updates relating to new utility model applications within a specific technological field or submitted by a particular organization or inventor.
Examinations: Having filed the application and paid the fees corresponding to the Substantive Examination before three months from its filing date, the Patent Office will examine the application to determine whether it complies with Arts. 53 (which defines utility models) and 55 (which sets forth the essential requisites for their grant) of the Patent and Utility Model Law. Should there be any objection to the application, the ARPTO will issue an office action. If the applicant does not respond to the office action within a term of thirty (30) days, the application will be considered abandoned. If the reply to the O.A. is not enough to overcome the objections, the ARPTO will issue a second, final O.A. If the applicant does not respond to this final office action within a term of thirty (30) days, the application will be considered abandoned.
In all cases, the terms for replying to office actions will begin thirty (30) calendar days after the publication of the office action in the Patent Gazette.
There are three thirty (30) calendar-day extensions of time available to respond any of the above O.A. These extensions of time are automatically granted and the payment of the corresponding official fees must be done at the moment of filing the response according to the number of extensions used or the application will be considered abandoned.
Independent utility model applications are examined in the order in which they were filed.
Divisional utility model applications are examined along with their parent application.
Publication: Once the application has passed the examination, it will be published in the Official Gazette for Patents through the ARPTO’s website.
Observation by third parties: Any person may lodge objections regarding the lack of novelty, industrial applicability, or illicitness of the subject matter and enter documentary evidence within a term of thirty (30) days as from the publication date. If the Examiner considers the objections to be founded, the applicant will be duly notified and will have thirty (30) days from the notification date to file a reply and/or counter-arguments and/or clarifications regarding the observations. Having said term elapsed and having the applicant replied to the observations or not, the ARPTO will decide on the matter rejecting or granting the application.
When all the corresponding requirements are approved, the Patent Office will issue the utility model certificate. The announcement of the grant of the utility model is performed electronically in the ARPTO’s website indicating the granted utility model number. In said publication, the ARPTO also informs the applicant to claim the utility model certificate at the P.O.; otherwise, the certificate will be archived.
The grant of the utility model certificate takes place without prejudice to any third party claim to a stronger right than the applicant, and without any guarantee from the State of the usefulness of its subject matter.
Please click here to see a utility model procedure flow chart, or here to see a Utility model Procedure timeline.
Appeals against the ARPTO may proceed:
a. against a definitive act, namely the refusal of a utility model; or
b. against an act that is not definitive but causes some type of prejudice to the applicant’s right.
The types of appeal can be summarized as follows:
- Reconsideration appeal: It is submitted before, and resolved by, the same authority which issued the administrative act, that is, the National Patent Administration. The term to file this appeal is of ten (10) working days from the notification date of said act. The hierarchical appeal, in subsidy, is implicit in the previous one. If the decision is not reversed in this area, the legal department will further study the matter, in which case the applicant will be informed and given five (5) additional working days to broaden the grounds of the appeal.
- Hierarchical appeal: It is submitted before the same authority which issued the administrative act, that is, the National Patent Administration. The matter will be brought to the legal department for its resolution. The term to file this appeal is of fifteen (15) working days from the notification date of said act.
- Appeal before a higher authority: It is submitted before the same authority which issued the administrative act, that is, the National Patent Administration, or the presidency of the National Institute of Industrial Property. The matter will be brought to the Ministry of Production for its resolution. The term to file this appeal is of fifteen (15) working days from the notification date of said act.
- Reconsideration appeal provided by Article 72 of Patent and Utility Model Law: Only valid when the act is the refusal of a patent or utility model. It is submitted before the same authority which issued the administrative act, that is, the National Patent Administration, or the presidency of the National Institute of Industrial Property. The presidency will resolve the matter. The term to file this appeal is of thirty (30) working days from the notification date of said act.
In the event that the refusal of a utility model is confirmed in the administrative instance in response to the appeal, there will be thirty (30) working days from the notification of the final decision to file a legal action.
The lawsuit must be initiated at the ARPTO accompanying the corresponding evidence. Later, the case is brought to the Federal Civil and Commercial Chamber where the court is raffled.
Once the judge is notified, there is a term of six (6) months to submit additional evidence. The evidence may consist of documentation, such as, grant certificates of homologous foreign utility models or patents, evidence provided by an expert (designated by the Court), evidence of a technical consultant, and informational evidence. All the documentation must be certified and legalized. In case the language is different from Spanish it must be translated into Spanish by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).
After said six (6) months term, the ARPTO has sixty (60) days to respond.
Subsequently, the opening to test, the production of evidence offered by the parties and the allegations occur.
Finally, the judgment of first instance is ruled. In case it is not favorable, the client can decide to appeal to the Chamber. If the second instance judgment is also not favorable, the last possibility is to file an extraordinary appeal to the Supreme Court.
4. POST-GRANT PROCEEDINGS
A utility model is a proprietary right granted by the Federal government pursuant to laws passed by Congress.
A utility model does not confer the right to use nor to exploit the technology covered by it; instead, a utility model confers on its ownerthe right to prevent third parties from engaging without his/her consent in acts of manufacture, use, offering for sale, sale or importation of the product covered by the utility model.
Any person who improves a utility model is entitled to apply for a utility model of addition as long as the parent utility model is in force. Otherwise, the new application will be considered to be independent from the original invention.
Utility models of addition are granted for the remainder of the lifespan of the utility model on which they depend. If there are two or more such parent utility models, the one that expires last will be taken into account.
After a utility model is granted, the owner must pay annual fees to keep the utility model in force. If the annuities are not paid within the term established by law, there is a 180-day grace period to carry out the payment of the updated fees (i.e. including the corresponding surcharges), after which the utility model will lapse under item C., article 62 of Law No. 24.481 (1996), and art. 4, of Resolution D-158 of August 11, 1998.
First and second annuities are complimentary.
Annuities are due only when the utility model is granted and payments must be made in advance to each year.
For independent utility models, annuities that are due until that moment (counted from the third annuity) must be paid prior to the first anniversary of the filing date following the notification date of the grant. From that moment on, each remaining annuity must be paid prior to the anniversary of the filing date.
Divisional utility models have the same effective filing date and anniversary date as the independent utility model. Annuities due at the moment of granting (counted from the third annuity) must be paid prior to the first anniversary of the filing date following the notification date of the grant. From that moment on, the annuities due will coincide with those of the parent utility model (both in number and corresponding fee).
Utility models of addition have their own filing date but the same anniversary date as the parent utility model. When the utility model of addition is granted, the annuity that must be paid coincides with the anniversary year of the parent utility model. For example, if the parent utility model is in its 8th year of protection, then the annuity due at the moment of granting the utility model of addition will be the 8th annuity. From that moment on, the annuities due will coincide with those of the parent utility model (both in number and corresponding fee).
The right conferred by a utility model does not produce any effect against any person who purchases, uses, imports or in any form markets the product protected by the utility model, once said product has been legally placed in the market in any country. The marketing is considered legal when it complies with the Agreement of Intellectual Property Rights Related to Commerce, Part III Section IV GATT-TRIPS.
The right of exploitation conferred by a utility model shall be granted, without the permission from the owner thereof, when the competent authority had determined that the utility model owner had engaged in anti-competitive practices.
Anti-competitive practices are considered to be, among others, comparatively excessive prices compared to the market average, refusal to supply the local market on reasonable commercial terms, and the obstruction of marketing or production activities.
Exploitation (working) of a product is deemed to exist when there is sufficient distribution and marketing efforts to satisfy the demand of the domestic market on reasonable commercial terms.
If the invention has not been worked, unless this was caused by force majeure, or serious and effective preparations have not been effected for the exploitation of the invention which is the subject matter of the utility model, or when the exploitation of said utility model has been discontinued for the term of one (1) year, any person shall be allowed to apply for an authorization to use the invention without the authorization from its owner.
It shall be considered force majeure, in addition to such legally recognized causes, the objective difficulties of technical and legal character, such as delays in obtaining registration with the authorities to secure marketing authorization that are beyond the control of the owner of the utility model and make the exploitation of the invention impossible. Lack of financial resources or the lack of economical viability of the exploitation shall not in themselves constitute justification.
A prospective user may request before the National Institute of Industrial Property the granting of an obligatory license for the manufacture and selling of the product protected by the utility model if he/she can accredit his/her attempts to secure the grant of a license from the owner of a utility model on reasonable commercial terms and conditions and such attempts were unsuccessful after a term of one hundred and fifty (150) running days as from the date in which the respective license had been applied for and that the technical and commercial conditions to supply the internal market are met.
The ARPTO shall notify the owner of the utility model the non-fulfillment of the above provisions before allowing the use of the utility model without authorization from said owner.
The implementing authority, after having heard the parties, and if they do not reach an agreement, shall establish a reasonable remuneration that the owner of the utility model shall receive, which shall be set forth in accordance to the circumstances of each case and taking into account the economic value of the authorization, bearing in mind the average rate royalty payable in the sector concerned under contractual licenses between independent parties.
The utility model shall lapse when the invention, assigned to third parties by compulsory licenses, is not worked for a term of two (2) years due to causes attributed to the owner of the utility model.
The ARPTO does not settle legal disputes between parties; all legal disputes are settled by the Federal Court. Please click here to see a schematic overview of the procedures relating to Legal Disputes in IP matters in our country.
Utility models granted in violation of the Law are wholly or partly null and void.
Any person (individual or company) with a legitimate interest may bring a nullity action with the Federal Courts.
The decision can be appealed to the Chamber of Appeals and, under certain considerations, to the Supreme Court.
The infringement of the inventor’s rights is considered as counterfeit and punishable by imprisonment and fine.
This penalty is also applicable to:
a. anyone who knowingly produces or causes to be produced one or more objects in violation of the rights of the utility model’s owner;
b. anyone importing, selling, exhibiting or introducing in Argentina one or more objects in violation of the rights of the utility model’s owner;
c. anyone who, being partner, agent, advisor, employee or worker of the inventor or his legal successors, appropriates or discloses the invention while it is still unprotected;
d. anyone who, corrupting the partner, agent, advisor, employee or worker of the inventor or his legal successors, obtains the disclosure of the invention;
e. anyone violating the obligation of secrecy imposed in the Patent and Utility Model Law.
A fine may be imposed on anyone who, not being the owner of a utility model or not being anymore the beneficiary of such rights, uses in its products or in its advertising designations capable of inducing the public into error with respect to their existence.
Criminal participation and complicity are applied in accordance with the Argentine Penal Code.
In addition to criminal actions, the owner of the utility model of invention and his/her licensee, may bring civil actions seeking the prohibition of continued unlawful exploitation and compensation for any prejudice sustained.
Precautionary measures:
a. Seizure of one or more samples of the objects under infringement
b. The inventory or the embargo of the offending articles and of the machines specially designed for the manufacture of the products or to the performance of the offending process.
Any person having in his/her possession infringing goods must provide a full account of the name of the person sold them to him/her or procured them for him/her, the quantity and value thereof as well as the time at which the retail sales began, on pain of being considered an accomplice of the infringer.
The plaintiff may demand security of the defendant in order to avoid interrupting the exploitation of the invention. In case the latter wishes to continue said exploitation, and, in the absence of the bail bond the former may request the suspension of such exploitation providing him a convenient bail bond, in the case it were requested.
Federal judges having jurisdiction in Civil and Commercial Matters are competent concerning civil actions. The Federal Judges having jurisdiction in Criminal and Correctional Matters are competent concerning penal actions.
5. ASSIGNMENTS & CHANGES OF NAME
ASSIGNMENTS
Utility models may be transferable and licensed, either fully or in part. The assignment of the utility model shall become enforceable against third parties, only once it has been recorded before the ARPTO. The Law also provides that the licensee will have the right to bring such legal actions as are available to the owner of the inventions, only where the said owner does not bring them himself/herself.
The following are the required documents for recording an assignment:
a. Assignment document: Must be signed by both parties. If a party is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Utility model Application Assignment Form, please click here. If the Utility model has been granted, please click here
b. Original certificate of registration in Argentina if the utility model has been granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the party, notarized and legalized (by Apostille or by the Argentine Consulate), unless included in the assignment document is also required.
All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).
The following are the rules regarding consideration:
a. Consideration need not be stated.
b. A nominal consideration may be stated.
c. The amount of U$S 1.00 is acceptable.
Assignments may be made with or without goodwill and it is not necessary to refer to goodwill in the deed.
Pending applications may be assigned. The assignment will be recorded prior to its registration.
The procedure starts with the filing of the assignment form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.
The PTO will conduct a study verifying that the filed documents meet the formal requirements.
Once the assignment has been approved by the PTO, the Office will issue a notification certifying that, in light of the filed documents, the assignment has been recorded in favor of the assignee. This document issued by the ARPTO is the proof of the assignment.
CHANGES OF NAME
The following are the required documents to record a Change of Name:
a. Change of name document (Certificate of Registry), signed by a notary attesting the change of name, and legalized by Apostille or by the Argentine Consulate. Please click here to download a Change of Name Form. Otherwise, a legalized certification of change of name of the company, issued by the competent authority in the corresponding country, must be filed.
b. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).
All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).
The procedure starts with the filing of the change of name form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.
The PTO will conduct a study verifying that the documents submitted meet the formal requirements.
Once the change of name has been approved by the PTO, the Office will issue an ownership update stating that a change of name has been filed and also certifying that, in light of the filed documents, the change of name was recorded in favor of the assignee. This document issued by the ARPTO is the proof of the change of name.
The registrant may effect all post-recordation actions under the new name.
MERGERS
Recordation before the ARPTO is required.
The following are the necessary documents to record a Merger:
a. A certificate attesting the merger issued by the Registry of Companies or by Notary Public or by any other competent authority according to the laws of the country where the merger took place. Legalization by Apostille or by the Argentine Consulate is required. Otherwise, it is also acceptable to submit an assignment document signed by both legal representatives (it can be the same person). If a legal representative is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Utility model Application Assignment Form, please click here. If the Utility model has been granted, please click here.
b. Original certificate of registration in Argentina if the utility model is granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).
All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).
The transfer to the surviving entity of rights arising from registration becomes effective against third parties.
6. LEGISLATION
Patent and Utility Model Law No. 24.481 of March 30, 1995, amended by Law Nº 24.572 of October 18, 1995, Decree No. 260 of March 20, 1996 and Law No.27.444 of June 18, 2018.
Argentina is a party to the Paris Convention.