Intellectual and Industrial Property

SYNOPSIS

A. INTELLECTUAL PROPERTY LAW

1. Legislation 15.101

B. INDUSTRIAL PROPERTY LAW

1. Patents of Invention and Utility Models 15.109
2. Phitogenetic Creations 15.112
3. Industrial Models and Designs 15.116
4. Trademarks and Designations 15.117
5. Other Institutes 15.119
6. Unfair Competition 15.120

A. INTELLECTUAL PROPERTY LAW

1. Legislation

15.101 Article 1 of the law 11,723 enacted in 1933 enumerates the intellectual work that is protected and concludes saying ..."i.e., every scientific, literary, artistic or didactic production whatever the reproduction process may be".

15.102 Property pertains to the author, his heirs and authorized users, during the author’s life and 70 years more, according to law 24,870.

15.103 The law establishes formal requisites for registration of intellectual work with the National Register of Intellectual Property, where it shall be deposited.

15.104 Thus, the National Board of Author’s Right has established different rules and proceedings, depending on whether it deals with requests for non-published work, published work, periodical publications, software and edition contracts, translations, adaptations, etc.

15.105 Law 11,723, typifies the different criminal conducts and establishes penalties for same, and also, organizes effective preventive measures tending to the suspension or attachment of work claimed to be infringing with the protection granted. It also organizes the civil procedure for actions emerging from the law.

15.106 Argentina has signed the Berne Convention and its amendments, the Inter-American Convention of Washington of 1946 and the Geneva Convention of 1952.

15.107 With regard to software, it is comprehended among the work protected by law 11,723, and no specific legislation for this has been enacted.

15.108 Concerning the fiscal treatment applicable to software, there are not unchallenged legal rules at the present time. Thus, through a case by case examination the National Bureau of Industrial Property (I.N.P.I.) allows registration of agreements for transfer of technology that include software licenses and, through registration, income tax withholding can range between a minimum of 19.8% and a maximum of 26.4%. The problem arises in the Federal Administration of Public Income (A.F.I.P.) interpretation to date. It considers that legal entities cannot be considered authors or heirs of authors of software, disregarding, in consequence, the application of the 11.55% withholding provided for payments for intellectual property that are made to authors or heirs for work registered with the Federal Direction of Author’s Right and insists, in consequence, on the application of the maximum marginal tax rate that is 29.7%.

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B. INDUSTRIAL PROPERTY LAW

1. Patents of Invention and Utility Models

15.109 Decree 260/97, approved the ordered text of law 24,481 as amended by law 24,572 and its regulation.

15.110 This text follows in general the principles of the General Agreement for Rates and Tariffs (TRIPS), to which Argentina is a part since 1995. It introduces important amendments to the Argentine patents system of the law 111 of 1864. Argentina, is also part of the Paris Convention as from 1966. The following are the principal characteristics of our legislation:

15.111 Article 4 states that:

• local or foreign individuals or legal entities with real or established domicile in the country are those in whose name title to industrial property can be issued.
• To be susceptible to protection by a patent a product or proceeding must be new, involve inventive activity and have industrial application. Industrial application shall exist whenever the object leads to obtaining an industrial result or product, understanding the term industry as comprehensive of agriculture, industry pertaining to forestry, industry pertaining cattle breeding, fishing industry, mining, transformation industries in strict sense and services.
• The right to register pharmaceutical products is acknowledged. Vegetal or animal varieties already existing in nature are excluded from this system.
• Even though the submission of pharmaceutical products patent applications is accepted, the new patent system for such product will become effective as from March 2001, in order to facilitate the conversion and adjustment of Argentine laboratories.
• Patents will be in force for 20 (twenty) years as from the date of submission of the application. In addition, the owner of a patent is obliged to manufacture, distribute and commercialize the products in Argentina, as after 3 (three) years as from concession and 4 (four) years as from submission of the application, if the patent is not exploited or if exploitation is interrupted for more than one year, any person may request the use of such patent without authorization by the owner.
• A system of obligatory licenses is proposed (without the owner’s authorization) due to lack of exploitation and/or practices against fair competition (such as high prices, shortage of products, impairing competitors’ commercial or production activities, or when a sanitary or National Security emergency does so require).
• The right granted by the patent will be determined by approved claims, which define the invention and limit the scope of the right. The first claim must be related to the main object and the others must be subordinated thereto.
• Exploitation of a product exists when there is sufficient distribution and commercialization to meet the national market demand under reasonable circumstances.
• Any person that improves an invention already registered has the right to apply for a patent of addition.
• The law establishes a publication regime for all pending patent applications which may be subject to objections by third parties within 60 (sixty) days of publication.
• The following shall not be considered inventions and therefore give no right to apply for a patent:

1. Discoveries, scientific theories and mathematical methods,
2. Literary or artistic work or any other aesthetic creation, as well as scientific works,
3. Plans, rules and methods for the performance of intellectual activities, for games or economical and commercial activities, as well as for computer programs,
4. The ways of presenting information,
5. The methods or surgical, therapeutic or diagnostic treatment applicable to the human body and the ones relative to animals,
6. The juxtaposition of known inventions or mixtures of known products, their variation in shape, dimensions or material, unless their combination or fusion is such that they cannot function separately or that the qualities or characteristic functions of same are modified so as to obtain a result not obvious for a technician in the matter,
7. All kinds all living matter and substances previously existing in nature,
8. All biological and genetic material existing in nature, in biological processes implicit in animal vegetal or human reproduction.

• The law also establishes that inventions made by an employee during the course of the employment agreement, relationship or services, having as total or partial purpose the performance of inventive activities shall belong to the employer. The employee shall be entitled to a supplementary remuneration if the personal contribution to the invention or the importance thereof for the company and the employer evidently exceeds the contents of the employment agreement or relationship.
• The law establishes that utility models may be registered for a period of 10 (ten) years as from the date of submission of patent application.
• The law establishes that patents and utility models will be subject to total or partial transfer and licenses.

2. Phitogenetic Creations

15.112 Law 20,247/73 seeks to promote seed production and commercialization, to secure seed identity and quality and to protect the ownership of a phitogenetic creation, which is "the variety obtained by discovery or by application of scientific knowledge to plant improvement."

15.113 The law establishes seed "classes" (identified, controlled and within this, original and certified), and organizes Registers such as that of Plant Ownership with the purpose of protecting the ownership of creators and discoverers of new plants. Title is granted for a period of at least 10 or a maximum of 20 years, and it may be transferred. Title for a foreign variety must be requested by the creator and shall be granted provided that the country of origin recognizes the same right to Argentine phitogenetic creations. Any person that delivers seeds with the owner’s authorization, or that reserves and plants seeds for his own use, or that uses or sells seeds as raw material or foodstuff does not violate ownership rights.

15.114 The law establishes penalties for the different infringements and allows public officers to inspect, take samples and make analysis of seeds at any time or place in order to comply with the law.

15.115 Decree-law 2183/91, regulates the law, the operation of the different bodies and the creator’s rights, in relation to scopes and restrictions.

3. Industrial Models and Designs

15.116 Decree-law 6673/63, ratified by law 16,478, deals with industrial models and designs. Argentina is a part to the Paris Convention since 1966 and to TRIPS since 1995. The following are the principal rules:

• Article 3 defines industrial models and designs as the shapes or aspect incorporated or applied to an industrial product, which give such product an ornamental character.
• Ownership is obtained by deposit in the National Bureau of Industrial Property. Prior publication is not required, there is no opposition right. Protection is granted for five years and can be renewed for two consecutive equal periods, at the owner request. The same register may include up to fifty homogeneous models or designs.
• Models and designs deposited abroad may also be deposited in the National Bureau of Industrial Property, provided that such deposit is made within six months since submission to the country of origin.
• The owner of a model or design may totally or partially transfer such model or design. Licenses may also be granted.
• Legislation grants criminal and civil legal actions to the owner of models and designs against those who infringe the law. It also provides measures prior to the commencement of legal actions so as to prove the existence of the alleged infringement and identify those who are responsible.
• When a model or design has also been subject to a deposit according to law 11,723 of "Author’s Rights", the owner cannot invoke both laws simultaneously when defending his rights. Therefore, he must choose between the protection of one or the other.

4. Trademarks and Designations

15.117 Law 22,362 and the Paris Convention and TRIPS applicable rules govern trademarks an designations and the following are the main provisions:

• Ownership of products and services trademarks is obtained by registration, characterized by publication of application, the right of any legitimate interested party to oppose to registration and previous examination of the application form and content by the National Bureau of Industrial Property. Prior use is not necessary for registration.
• Non registered trademarks are not legally protected, though the Courts have recognized certain rights with the purpose of avoiding fraud and bad faith. Foreign trademarks must be registered, and exceptionally Courts have granted protection by nullifying fraudulent registrations by non authorized third parties.
• Trademark registration is in force for 10 years since it was granted and it can be indefinitely renewed for equal periods, provided that it has been used within 5 years prior to each expiration, in a product or service commercialization or as a part of an activity designation.
• A trademark may be freely transferred and granted in license. The law authorizes co-ownership by two or more individuals. Legal actions can only be commenced by the trademark owner.
• The International Classification of Products and Services (Nice Agreement) applies in Argentina.
• Expiration of a trademark may be demanded by means of a legal action when it has not been used in the country within five years prior to date of filing of the judicial request. Expiration is not effective when the trademark has been used in the commercialization of a product or the rendering of a service, included in other classes or if it is part of the activity designation. This rule allows registration of defense trademarks.
• Ownership of the "designation" that distinguishes an activity, different from the trademark, is acquired by use and only in relation with the activity in which it is used.
• Any person with a legitimate interest may oppose to the use of a designation and the legal action for change of designation prescribes after a year since the third party began to use it publicly or since petitioner had notice of its use.
• The law provides, both for trademarks and designations, the possibility of taking measures prior to legal actions in the cases of infringements, so as to verify misuse and identify those who are responsible. These measures include attachment of products under alleged infringement.

15.118 In order to register trademarks, patents of invention, utility models, industrial models and designs or to transfer them, compliance with the following formalities is required:

Trademarks:

1) Label (only in case of
non-denominating trademarks).

2) List of products and/or services to be protected.

3) Priority: (must be requested within six months since the date of submission in the country of origin) enclosing certified copy of the original application.

4) Power of attorney.

Patents and Utility Models:

1) A copy of the annual report and claims to be translated into Spanish and copy of the drawings.

2) Priority: (must be requested within a year since the date of submission in the country of origin) enclosing certified copy of the original application.

3) Document of assignment of the inventor’s rights (only in the case that the inventor is an individual different from the petitioner).

4) Power of attorney.

Industrial Models and Designs

1) A copy of the description to be translated into Spanish and copy of the drawings.

2) Priority: (must be requested within six months since the date of submission in the country of origin) enclosing certified copy of the original application.

3) Document of assignment of the creator’s rights (only in the case that the creator is an individual different from the petitioner).

4) Power of attorney.

Transfer of trademarks, patents of invention, utility models or industrial models or designs:

1) Title.

2) Power of attorney.

3) Amount of the transfer.

Power of attorney: It must be signed by an authorized person, the signature must be certified by a Public Notary, with Consular legalization or, otherwise, legalized with the Apostille according to The Haye Convention.

5. Other Legal Institutes

15.119 Legal institutes mentioned in items 1 to 4 are those regulated in particular by different laws. Other institutes of industrial property law such as commercial style, collective or certification trademarks do not have a specific protection, but their owners could start a legal action for unfair competition against the infringers.

 6. Unfair Competition

15.120 Argentina has not enacted a specific law regulating the exercise of unfair competition legal action. Nevertheless, this does not mean that unfair competition acts may remain unpunished in Argentina, as, not only do isolated rules referring to unfair competition exist but Courts have also considered these acts punishable on grounds of civil code provisions and of the general principles of law.

15.121 Article 159 of the Criminal Code typifies unfair competition crime and states: "Any person that by means of fraudulent procedures, bad faith suspicions or any other means of unfair publicity, for his own benefit, tries to attract customers of commercial or industrial premises".

15.122 As Argentina is a part to the Paris Convention since 1966, that international treaty, a law in Argentina, in article 10 bis establishes that the countries of the Union, must secure an effective protection against unfair competition, then it defines the unfair competition act and exemplifies three principal cases of same. Therefore, it may be concluded that, although no specific law has been enacted, unfair competition legal action may be sufficiently grounded on the above-mentioned provisions and on article 953 of the Civil Code and the general principles of law.

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