This is the fifth post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order). Our first four posts examining divisional practice in Brazil, Mexico, China and India and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China and Divisional Practice – India.
Filing Divisionals in Argentina
The procedure for filing a divisional application in Argentina is relatively straightforward. Specifically, a divisional application can be filed up until a parent application is rejected or issues. However, in all cases, a parent application must still be pending (e.g., not rejected or issued) at the time a divisional application is filed. Moreover, if a divisional application to be filed is a divisional application of another application (e.g., a divisional of a divisional), it is necessary that both the first (or subsequent) divisional application and any parent application be pending. For purposes of illustration, the below examples are provided:
- On November 1, 2019, while a parent application was pending, Applicant filed a first divisional application. Both the parent and divisional application are both currently pending. Can the Applicant file a second divisional off of the parent or first divisional application? Yes, the Applicant can file a second divisional off of either the parent or first divisional application because each is still pending. However, Applicant should make sure to file the second divisional application as soon as possible before either the parent or first divisional application issues or is rejected.
- On November 1, 2019, while a parent application was pending, Applicant filed a first divisional application. Although the divisional application is pending, the parent application is currently rejected. Can the Applicant file a second divisional off of the parent or first divisional application? No, Applicant cannot file a second divisional application off of either the parent or first divisional application because the parent application is rejected. Any subsequent divisional application filed will be rejected.
- On November 1, 2018, while a parent application was pending and before issuance of a first substantial examination report, Applicant filed a first divisional application. A first substantial examination in the parent application was subsequently received and the parent application issued on June 1, 2019. On June 1, 2019, the Examiner issued a notice in the first divisional application that the claims lacked unity and a first substantial examination report was issued. Can the Applicant file a second divisional off of the first divisional application? No, the Applicant cannot file a second divisional off of the first divisional application because the parent application is no longer pending and has issued. Any subsequent divisional application filed will be rejected.
The analysis provided in the examples above is how the Argentine Patent Office currently interprets the current patent law and regulations. However, there is considerable debate amongst practitioners in Argentina regarding the correctness of this interpretation. Specifically, many practitioners interpret the law and regulations as only requiring the immediate parent of a divisional application to be pending and not a grandparent or great grandparent. However, to date, there has been no litigation clarifying this interpretation.
Finally, the claims in any divisional application cannot be identical to those in a parent application. While an Applicant can initially file a divisional application having the same claims as those in a parent application, at some point during prosecution, Applicant will have to amend the claims to have different scope than those of the parent.
Please continue to watch BRICS & Beyond for updates on divisional applications in Argentina.
This post was written by Lisa Mueller and Gastón Richelet of Richelet & Richelet