CHANGES IN THE RULES REGULATING THE PROFESSION OF INDUSTRIAL PROPERTY AGENTS
Resolution 201/2019 of the National Institute of Industrial Property of August 16, 2019, published in the Argentinean Trademark Bulletin No. 4844 of August 21, 2019, introduced a series of modifications to Resolution 101/2006 regulating the profession of Industrial Property Agents. The main changes are the following:
Requirements to obtain registration (Article 2)
- It was specified that the type of residency in the territory of the Argentine Republic that the applicants must hold to obtain the registration must be the permanent residence (Art. 2.a).
- Registering in the National Institute of Industrial Property (INPI) Procedures Portal (portaltramites.inpi.gob.ar) is now an explicit requirement (Art. 2.e).
- The Agents must establish and maintain updated their legal domicile within the territory of the Argentine Republic — instead of the previous restriction limited to the Autonomous City of Buenos Aires -, as well as the data provided in the INPI Procedures Portal (Art. 2.f).
- In order to become a licensed Industrial Property Agent, applicants must take the INPI formation course and pass its proficiency exam (Art. 2.g). In particular, the wording of the previous subsection h) was discarded, choosing to leave the precision of the approval details, completed, and curricula to the INPI. The frequency of one formation program per year is set as a minimum, and the INPI can organize more than one course per year. However, we highlight that in 2019 there will only be one course.
- The mandatory courses of the INPI’s continuing education program are established as a requirement (Art. 2.i).
Impediments to Obtain the INPI Agent License (Article 3)
- INPI officials and employees are allowed to access the course for aspiring agents, and take their exams. If they pass, they may request their enrollment after two years (2) have elapsed since the end of their employment relationship with the INPI. Previously, they did not have the possibility to attend the course or take the exam to obtain the certificate of approval as long as they were employees at the INPI (Art. 3.a).
Effects and Powers (Article 4)
- The new section ii) is introduced, making the intervention of an agent mandatory for the for the presentation of procedures resolving oppositions, expiration and nullity of trademarks. Thus, this requirement is shifted with respect to the formulation of Administrative Resources to section iii) (previous section 2nd, according to its original numbering) (Art. 4.a).
- It is added that Agents can authorize others, through the online procedures of the INPI Procedures Portal, in addition to the existing registration (Art. 4.b).
- It is established that Agents may act as proxies through a written instrument signed by the principal, in accordance with the rules of Title IV of Resolution P 250/2018 of the INPI Registry; also it affirms that if the INPI requests proof of such accreditation, the Agent shall confirm its authorization by offering the supporting documentation (Art. 4.c).
- Subsection e) simplifies its original wording regarding the ratification of management, establishing that Agents are authorized, in all their proceedings before the INPI, and that the latter may request the petitioner or principal to ratify the authorization granted to the Agent (Art 4.e).
- The exception of section i) (previous °) was eliminated, concerning the annual limit that non-agents and non-lawyers registered in the national territory had, whose text contemplated the procedures exercised by Industrial Property Agents enrolled before the INPI (Art. 4.f).
Duties (Article 5)
- Subsection b), which previously referred to the duty to maintain the confidentiality of information received as an agent, is replaced in its wording with the mention and express development of the duty of professional secrecy; detailing that it includes both the confidentiality due to the client, to his or her colleagues, and those resulting from interviews for conciliations and/or transactions. It extends this duty to the documents received by the agent.
Prohibitions (Article 6)
- Subsections i), k), and l) are added, concerning the prohibition of violating the duty of confidentiality ‑originated from the duty to maintain professional secrecy-; the prohibition of falsifying information contained in official declarations on the INPI procedures; and the prohibition of omitting or falsifying the contact details of the petitioner or the principal.
Disciplinary Sanctions (Artículo 7°)
- It is established that the mere error of the agent does not constitute grounds for applying sanctions.
- In subsection a), the penalty of warning will be deserved even if the violation of the duties (indicated in Article 5) does not cause an economic perjury
- In subsection a), the penalty of warning shall be apply even if the violation of the duties (indicated in Article 5) does not cause an economic tort.
- In subsection b), for the sanction of suspension in registration for ninety days (90), the conduct of subsection i) of Article 6 (advertising or offering services by itself or by third parties at the INPI) is replaced, for that of its subsection k) (false information contained in official declarations on the INPI procedures).
- In subsection c), it is added as grounds for cancellation of registration, incurring maliciously in subsections k) (false information contained in official declarations on the INPI procedures) and l) (omitting or falsifying the contact details of the petitioner or the principal) of Article 6°.
- The three years to re-apply for a new registration (in the case of cancellation of the agent registration) is counted from the fulfillment of the sanction, changing the previous wording that fixed it “from the effective application in the measure”
- The penalty of the fine is added in the new paragraph d): it proceeds cumulatively to the other sanctions, when the imposition is considered pertinent due to the seriousness of the event. In the case of a warning sanction, a sum equivalent to the cost of one (1) and up to three (3) trademark applications; in the case of a suspension of the license, between four (4) and up to eight (8) trademark applications; and in the case of cancellation of the license, between nine (9) and up to twenty (20) trademark applications, all calculated at the time of the penalty.
- Without modifying or adding articles to the original resolution, it calls agents who have not registered in the INPI Procedures Portal to carry out said registration within a period of one hundred eighty (180) calendar days. If they do not register, the agents will find their licenses suspended.
The implemented changes were developed according with the latest modifications in the INPI online system, as well as the modifications of Act 27.444, on the industrial property regulations. It is foreseeable that such policy will contribute to the continuous improvement of the Industrial Property Agent profession, as well as the relation between agents and the National Institute of Industrial Property, which translates into better services for the individuals dealing with such procedures.