Successfully navigating the patent system in Argentina requires more than just technical precision. It demands strategic foresight, especially when it comes to divisional applications. These filings play a crucial role in preserving the scope of protection when a single application covers multiple inventions or when prosecution strategy calls for a more segmented approach.

The filing of divisional patent applications in Argentina follows specific regulations and practices enforced by the Argentine Patent and Trademark Office (AR PTO or “INPI”, for its acronym in Spanish). The framework and guidelines surrounding these applications have developed to address complexities that arise during patent prosecution. Below is an outline of the critical aspects of AR divisional practice.

Timing and basis for filing divisional applications

Divisional applications in Argentina must be filed based on a pending parental patent application. This means that, if prosecution of the parent application has reached a final resolution (granting, rejection, abandonment/withdrawal) the divisional application cannot be accepted. Therefore, divisional filings will only be admissible before a final decision in the parent case.

According to the current criteria applied by the Office, divisional applications will only be accepted if filed before the final resolution is published in the Patent Gazette (where notice is served), that is, excluding the 30-day grace period set forth by Resolution 191/2020.

It should be noted that two scenarios are possible for divisional filings: either an examiner in charge of an application may request division of matter if it is found that the requirement of unity of invention is not complied with, or the applicant may voluntarily proceed with a divisional application filing. The only difference according to current local practice is the applicable official fee: voluntary filings have double official fees as compared to those cases where an invitation to divide the application was issued by the examiner.

Even during a reconsideration process (i.e., appeal stage) following the rejection of a parent application, a divisional application may be submitted. However, such a divisional application’s fate is intrinsically linked to the outcome of the appeal process. If the parent application’s denial is upheld and rejection of the parent case is confirmed, the divisional application will also be denied. Therefore, filing divisional applications proactively—such as when responding to a pending office action—is highly recommended to avoid uncertainties.

Substantive requirements for divisional applications

Divisional applications in Argentina are subject to these essential requirements:

• The subject matter claimed in the divisional application must be supported by the specification as originally filed in the parent application. In other words, the claims must not go beyond the original disclosure of the invention.

• The claims of the divisional application must be clearly distinguishable from those of the parent application. Overlapping claims between the divisional and parent applications are prohibited.

Therefore, divisional application must avoid sharing the same scope of protection to prevent a double patenting objection. Any overlap in claims between the divisional and parent applications will likely lead to a double patenting objection during the substantive examination.

Double patenting and examination practices

The AR PTO assigns a record number to divisional applications upon filing, irrespective of how their claims are formulated. However, the first office action related to a divisional application with overlapping claims will likely raise a double patenting objection.

Applicants must address and resolve such objections when responding to the office action issued in the divisional file.

Challenges with divisional applications following rejection of parent applications

Recent trends reveal that the AR PTO may directly reject divisional applications if the parent application’s rejection is confirmed, arguing that the matter has already been examined and dismissed. While this practice is uncommon, it highlights the necessity of ensuring divisional claims are distinct and defensible.

In some cases, divisional applications have been denied without substantive examination, based on the prior rejection of the parent application. Although applicants can appeal such denials through a Reconsideration Action, the inability to amend claims during this stage poses additional challenges.

Final recommendations

Given the strict guidelines and evolving practices, it is prudent to file divisional applications early in the prosecution process, ideally alongside responses to pending office actions, always taking into consideration how prosecution is evolving or expected to evolve in the parent case. Doing so ensures that the divisional application is considered independently before any final decision on the parent application.

Applicants should carefully draft claims for divisional applications to avoid overlap with parent claims and address potential objections proactively. Additionally, maintaining distinct subject matter and preparing for potential challenges during examination are key to navigating the divisional application process in Argentina.

The divisional application framework in Argentina underscores the importance of strategic planning during patent prosecution. While the system allows for the filing of divisional applications under specific conditions, applicants must remain vigilant to ensure compliance with AR PTO’s strict requirements and anticipate potential objections during examination. By taking a proactive and well-considered approach, applicants can optimize the protection of their intellectual property in Argentina.