YEARBOOK 2008 / I - AIPPI

Section 36 of the Regulatory Decree provides:
“ ... it shall be understood that an imported product has been lawfully placed on the market
when the licensee authorized to market it within the country, shows that it has been placed
on the market by the patentee in the country where it was acquired, or by a third party
authorized to market it.”
One possible reading of Section 36 of the Argentine Patent Law is that if the product was
lawfully placed on the world market by someone, there would be no further exclusive patent
rights in Argentina. For instance, the product could be placed on the market in a country
where there is no patent protection at all.
However, we understand that such interpretation is not acceptable because it would contradict
the exclusive right conferred by Article 17 of the Argentine Constitution, and more specifically
by Section 8 of the Patent Law and Article 28 of the TRIPS Agreement since they both extend
the right conferred by a patent to the prohibition of the imports of the concerned product.
For that reason, we estimate that a reasonable interpretation of Section 36 of the Argentine
Patent Law would be that “lawfully placed” means with the authorization of the patentee
or its licensee or a party authorized by the patentee. In other words, that Section 36 of the
Argentine Patent Law would refer to the “exhaustion of rights” situation and that accordingly
the exclusive right of the patent holder is exhausted after the product is lawfully placed on the
market, in Argentina or abroad.
In addition, to support that interpretation, we would point out that the Supreme Court has
accepted the validity of the so-called “parallel imports” in trademark cases as long as these
imports are the consequence of an “exhaustion of rights” occurred in another jurisdiction.
In any event, it is worth noting that our patent legislation is not particularly clear on this matter
nor is there is any relevant case law.
4) Is an individual prescriptions exception recognised under your patent law? If so, under which
conditions?
Yes, an individual prescriptions exception is recognised under the Patent Law, which provides
that the rights conferred by a patent shall have no effect against: (i) the production of medical
products habitually carried out by licensed professionals, and per unit, upon executing a
medical prescription, nor (ii) any further acts related to such medical products.
5) Please answer this question only if in your country methods of medical treatment are patentable
subject matter: Does your patent law provide for a medical treatment defence or similar
exception to the patentee’s exclusive rights?
Methods of medical treatment are non patentable subject matter in Argentina.
In this respect, Section 6.e) of the Argentine Patent Law does not consider methods of chirurgic,
therapeutic or diagnostic treatment as inventions.
A related issue is the patentability of second medical uses, which are not explicitly admitted
or rejected under the Argentine statute. Few patents were granted that could qualify as
focusing on second medical uses. However, afterwards, the Argentine Patent Office started
rejecting patent applications for these inventions. Moreover, the Guidelines of the Argentine
Patent Offices do not admit Swiss-type claims as main claims in a patent application.
6) Are compulsory licenses available under your patent law? If so, under which conditions and
on which grounds (e.g. to remedy anticompetitive conduct, for cases of emergency, other
public interest grounds, etc.)? Are you aware of any compulsory licenses granted in your
country for the domestic manufacture and supply of pharmaceutical products? If so, please
provide details, including the name of the licensor, the licensee and the product covered.
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