On December 3, 2020, the Supreme Court of Justice of the Nation (“CSJN”) upheld the ruling of the Civil and Commercial Appeals Chamber – Chamber I, in the case “Société de Conseils de Recherches Et D’Applications Scientifiques (”S.C.R.A.S.”) v. INPI,“ regarding the impact on novelty of the publication of a patent application under the Patent Cooperation Treaty (”PCT”), to which Argentina is not a party.
In the facts of the case, S.C.R.A.S. applied for a patent registration with the INPI in 1997 and invoked as prior disclosure (Art. 5 Law 24,481) the publication of patent application WO 36/07398 in the Official Gazette of the International Bureau, published in 1996 under the PCT regime.
However, the Chamber noted that the patent had been applied for on August 31, 1995, at which time the plaintiff had invoked two priority dates, one on September 2, 1994, and the other on March 8, 1995. Thus, the Court understood, as did the court of second instance, that these dates were relevant in determining the novelty of the invention, and therefore the patent was outside the priority period and should be rejected.
To this end, the CSJN recalled Article 5 of the Patent Law (which establishes that the novelty of the invention shall not be affected if the inventor or his successors voluntarily disclose it within the year prior to the date of filing the application or recognized priority) and established that the applicant cannot claim to use the “grace period” provided for in the law to retroactively extend the relevant date for assessing the novelty of the invention by more than 12 months, thereby exceeding the right of priority.
The peculiarity of the case was that the Supreme Court upheld the Chamber’s ruling that the publication of a patent application, even under the PCT (of which Argentina is not a party), implies voluntary disclosure by the applicant. In this regard, it added that the publication of the application is an implicit act because it is provided for in each of the legal patent registration systems.
