At-a-glance:
Instituto Nacional de la Propiedad Industrial (INPI)
Paseo Colón 717 (CP 1063), Buenos Aires, Argentina
Tel: +54 11 4344 4968, Fax: +54 11 4344 5286
Email: infomarcas@inpi.gov.ar, infopatentes@inpi.gov.ar
Website: www.inpi.gov.ar
The...
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At-a-glance:
Instituto Nacional de la Propiedad Industrial (INPI)
Paseo Colón 717 (CP 1063), Buenos Aires, Argentina
Tel: +54 11 4344 4968, Fax: +54 11 4344 5286
Email: infomarcas@inpi.gov.ar, infopatentes@inpi.gov.ar
Website: www.inpi.gov.ar
The passage of new guidelines regarding the patentability of pharmaceutical products was the most important IP development of 2012 according to Argentine IP lawyers. The restrictive nature of the joint resolution passed by the Ministry of Health, the Ministry of Industry and the country's patent and trade mark office (INPI) in May 2012 stoked concerns similar to those triggered by the expropriation of Spanish oil company YPF the same month – namely that Argentina has become increasingly inhospitable to foreign investment and is returning to a protectionist regime.
"This government's policies do not attract foreign investment. We are missing great opportunities," is how one lawyer sums up the situation. "Our neighbours are growing and they are growing well."
Aside from the economic impact such a move may have, many IP practitioners also predict an increase in litigation. "Cases will be filed against the PTO, but part of the fight is between R&D companies and local generic manufacturers," who would benefit from the implementation of these new rules, one partner explains.
"The local pharmaceutical companies have a great lobby against patent laws; 50% of the market is controlled by local pharmaceutical companies. The patent office sympathises a lot with generics and local companies," notes another attorney.
The joint resolution bans patents on new combinations of known compounds, second medical uses and methods of treatment. Prodrugs, formulations and compositions may be patentable but only under very specific circumstances. The new guidelines have been widely criticised for several reasons, all of which can serve as a basis for fighting them in court. In addition, the resolution may be a violation of Argentina's constitution, according to some attorneys.
The new rules have also been criticised for deviating from the Trade-Related Aspects of Intellectual Property Rights (TRIPs) agreement, by redefining the terms invention, novelty and non-obviousness in a way that conflicts with the TRIPs definition. They may also be discriminatory, since they apply only to pharmaceutical products.
The new rules went into effect immediately and apply not only to new applications but to pending applications as well. "It remains to be seen how these guidelines are put into practice," says one attorney.
In theory, the guidelines are meant to be instructions for patent examiners. However, according to past experience, lawyers say the guidelines will most likely serve as very specific legal provisions which must be followed.
"We expect the PTO [INPI] will reject patents on uses or methods – patents are not a very popular thing in Argentina for the government," remarks one partner. "Clients keep filing though because this government won't last forever."
Foreign exchange restrictions which have been imposed in an effort to prevent money from leaving the country are also hindering foreign investment and business activity in general.
"There is also a big problem for licensors and licensees. Local licensees are not able to pay royalties and banks can't pay in dollars, so local companies can't pay foreign companies," one partner explains.
Restrictions on imported goods have also had an effect on IP-related matters, primarily in the form of increased infringement. "[The government] has shut down importation in many fields in order to favour local industry," one attorney notes. As a result, certain goods that had been imported when the restrictions were imposed are being held up in Customs. "Since the imported goods cannot enter the market, pirates take advantage of this situation and commence local manufacture of the goods bearing foreign marks," the partner adds.
Added another: "It's been a difficult year for IP due to [Cristina Fernández de] Kirschner's administration. It's been difficult for Argentina in general."
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