Patents: Uruguay

General Information

International Agreements : Paris Convention & TRIPS Agreement. Not a member of PCT.

Patent Types : Patent of Invention - Industrial Designs - Utility Models

Novelty Requirements : Absolute Novelty is required. Includes non-obviousness, inventive-step and novelty over prior art.

Claiming priority : Yes – 12 months convention priority for Patents of Invention and Utility Models, and 6 months for Industrial Designs, as per the Paris Convention. The Priority Document must be filed within 90 days from filing date. Does not require legalization. Must be translated in Uruguay by a Sworn Uruguayan Translator in to Spanish.

Examination : Yes - Formal and Substantial Examination. After filing, the application must be published in the Industrial Property Bulletin at applicant's request up to 18 months counted from the filing date, or from the priority date, if applicable. Substantial Examination must be expressly requested by applicant, simultaneously with request for publication or later up to 120 days after publication date.

Protection Period : 20 years counted from the filing date

Publication : After filing, the application must be published in the Industrial Property Bulletin at applicant's request up to 18 months counted from the filing date, or from the priority date, if applicable

Annuity Payments : Annually - Payable only after granting of the Patent.

Deadlines for payment : The renewal fees or annuities must be paid for within the term of six months prior to the expiration date of each year (day and month of the application date). The expiration date is the day before the anniversary.

Grace period for payments : 6 Months with 50% surcharge.

Compulsory Licensing : Yes - The Patent Act establishes a compulsory license regime for those cases of non-exploited patents, which may be requested by interested third parties after the expiration of 3 years from the granting date of the patent or 4 years from the patent application, whether the invention has not been exploited, or serious and effective preparations have not been pursued, or the exploitation has been interrupted for more than one year, other than in exceptional circumstances (except for reasons of force majeure).
The Patent Act also foresees compulsory license regimes for abusive competitive practices or abuse of a dominant market position, for reasons of public interest (national defense, etc.), for dependent patents, and for refusal to deal with a qualified party possessing technical and economic capability to exploit the invention.

Working or nominal working of Patents/Inventions : In line with the previous legislation, exploitation of the patent is not required in order to keep the registration of a patent of invention in force. Absence of use does not constitute a reason for nullity, cancellation, or extinction of the patent rights. The concept of exploitation is very ample and thus benefits the applicant and owner of the patent. To that end, it is considered exploitation of a patent, the production, use, importation or any other commercial activity pursued in regard to its object. Moreover, the exploitation of a patent held by a representative or licensee will be considered as held by the owner (article 54). However, the new Act establishes the possibility of granting a compulsory license for those cases of non-exploited patents if requested by a qualified third party.

 

Filing Requirements

Patent Filing Requirements

  1. Applicant's name and address, name of inventor(s) and Title of the Invention (no more than 20 words).
  2. Power of Attorney Form (no certification nor legalization is required. May be faxed and the original mailed later). 
  3. If the application claims convention priority, and the applicant in Uruguay is different from the applicant in the Priority Document, an standard Assignment of Priority Rights will be required (duly legalized up to the nearest Uruguayan Consulate).
  4. Patent Specification. Abstract of the Inventions (no more than 100 words). 
  5. Claims. 
  6. Drawings (if applicable) - No special or formal drawings are required. Must be filed in Spanish (we provide translation services at our end).

 

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