INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - URUGUAY

Decree No. 11/000 
Regulates Law No. 17.164, regarding Invention Patents, 
Utility Models and Industrial Designs 

IN VIEW OF: 

the provisions of Law N� 17.164, dated September 2, 1999; 

WHEREAS: 

I) that the formulation of said Law was motivated by the Executive Power purpose to update and modernize patents legislation;

II) that taking into account the above, those modifications introduced allow the adaptation of said legislation to the new global and regional trends, the new conditions of trade development and the existence of new technologies, circumstances that the previous Law could not possible contemplate or provide;

III) that said modifications have adapted our national system to the international agreements signed by our country;

IV) that said modifications have likewise contemplated some matters not provided for by the previous Law, since they were later in time; 

WHEREAS: 

I) that Decree regulating Law N� 17.011 fits within the frame of the national provisions in force and of international agreements of outstanding importance such as the Paris Convention in the Stockholm Act version, dated July 14, 1967 and ratified by Decree Law N� 14.910, dated July 10, 1979 by which our country entered to the World Intellectual Property Organization (WIPO), and the Agreement on Trade Related Aspects of Industrial Property Rights (TRIPS) attached to the Agreement establishing the World Trade Organization (WTO) ratified by Uruguay through Law N� 16.671, dated December 13, 1994;

II) that this decree regulates those rights and obligations regarding Invention Patents, Utility Models and Industrial Designs as well as the corresponding proceedings thereof;

III) that once the corresponding studies were duly carried out with those sectors involved and the Industrial Property Attorneys and once the corresponding conclusions were obtained, there are no further impediments to the issuing of the administrative act regulating Law N� 17.164, dated September 2, 1999;

IN VIEW OF: 

the above and the provisions or Law N� 17.164, dated September 2, 1999,

THE PRESIDENT OF THE REPUBLIC DECREES: 

CHAPTER I
REQUIREMENTS AND STEPS TO BE TAKEN FOR 
THE GRANT OF INVENTION PATENTS

ARTICLE 1. To file an application for an invention patent the applicant shall comply with the legal requirements provided for in Article 22 of Law N� 17.164, dated September 2, 1999 and with the formal requirements established by the Industrial Property Office, completing the corresponding form. 

Said applicant shall likewise certify the payment of the corresponding fees or file the application for the exoneration, discounts or payment systems provided for in Article 113 of Law N� 17.164, whichever applicable. 

ARTICLE 2. The title of the invention shall be clear, concise and in agreement with the corresponding claims. It shall not include fancy names. 

ARTICLE 3. The application shall include:

A) A) Clear and concise description of the invention for it to be fully understood, indicating the manner to execute the same according to the provisions of Article 4 hereof. 

B) B) One or more than one claim, which shall precisely define the extent of the object of the invention to be protected by means of the patent right, according to the provisions of Article 5 hereof.

C) C) Those diagrams, technical drawings or formulas required for the accurate understanding of the description with the corresponding references. 

D) D) An abstract of the invention allowing an easy understanding of the posed technical problem, the provided solution and the main uses of the invention, written in no more than 100 words. 

E) E) If a divisional patent is applied for, indication of application number and date of the original or main patent.

ARTICLE 4. The description shall include the following data:

A) A) Title of the Invention as written in the application.

B) B) Identification of the technical sector the invention belongs to. 

C) C) Identification of the state of the art prior to the application filing date or the priority date, whichever applies, known by the applicant and useful to understand the invention and to the examination of the application. Those already known documents disclosing said state of the art shall be quoted. 

D) D) Explanation of the invention as characterized in the corresponding claims and allowing a technician with average knowledge of the matter to understand the posed technical problem as well as the solution provided thereto. Differences between the invention and the prior art must be clearly stated.

E) E) Brief description of drawings contents, if any. 

F) F) Explanation of the manner to execute the invention describing in detail the process or method to obtain or manufacture the product, as applicable. This explanation may be illustrated with examples and references to the drawings, if any. 

G) G) Indication of the manner in which the invention can be industrially exploited, produced or used, unless this arises clearly from the description or from the invention nature. 

The description may be presented in a different manner or in a different order whenever this allows a better understanding and a more concise presentation on account of the invention nature.

ARTICLE 5. Claims shall be correlatively numbered and they shall include the following:

A) A) an introduction defining the object of the invention (such as the name or denomination). The same shall include all the known aspects of the invention which are already comprised in the state of the art;

B) B) a characterizing part concisely mentioning the technical elements defining the novelty of the invention whose protection is applied for.

When required for a better understanding, the main claim may be followed by one or several dependent claims which shall make reference to the claim they depend from and shall explain in detail the additional characteristics whose protection is applied for. 

This also applies when the main claim is followed by one or several claims relative to particular manners of executing the invention.

ARTICLE 6. When the object of a patent application is a microorganism or when the execution of said object requires a microorganism which is unknown or is not available to the public, the applicant shall deposit said microorganism. This obligation shall be deemed as duly complied with if the microorganism has been deposited as from the filing date of the application or before said date, according to the provisions of this Article and Article 7 hereof.

The culture of the deposited microorganism shall be available to any person applying therefor, as from the publication date of the patent application. Before said date it shall be available only to those persons entitled to consult the application file. 

The availability shall consist in obtaining a sample of the microorganism applied for, in the regular conditions in which this operation is carried out. 

The person applying for said culture shall undertake the following obligations as regards the patentee:

A) A) Said applicant shall not communicate to third parties the culture object of the patent or any culture derived therefrom before the patent application is dismissed or abandoned or before said application is deemed abandoned or the patent forfeits. 

B) B) Until the corresponding resolution is taken as regards the patent application, said applicant shall use the culture object of the patent or any culture derived therefrom only to experimental aims.

ARTICLE 7. According to the provisions of Article 25 of Law N� 17.164, until those institutions authorized for the reception of the biological material required for the description of the applications regarding microorganisms are not appointed, the applicant shall file said material with any of the international depositary authorities recognized by the �Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure� done at Budapest on April 28, 1977 .

In any case, the said institution must comply with the following conditions:

A) A) to be of permanent character; 

B) B) to be independent from the depositor�s control; 

C) C) to have the suitable staff and premises to test the deposit relevance and guarantee the storage and conservation of the same without contamination risks. 

D) D) to provide the required security measures to reduce the risk of biologic material loss to a minimum extent.

ARTICLE 8. When the priority of a foreign application is claimed, according to the provisions of Article 24 of Law N� 17.164, the applicant shall be granted a term of 90 (ninety) days as from the filing date of the application to add a certification issued by the office receiving the application. Said certification shall include the date of the deposit, the identification of the applicant, the assigned number and the authentic copy of the application whose priority is claimed. 

Translation of the mentioned documents done by a Public Translator shall be also furnished when the said documents are written in a foreign language. 

Failure to comply with the above mentioned requirements within the stated term shall result in the loss of the right of priority claimed. 

ARTICLE 9. Once the application is duly filed the formal examination shall take place. 
If said examination reveals that the application does not fulfill the requirements established in Article 22 of Law N� 17.164, but it includes the name and surname of the applicant, a description of the invention allowing the clear identification of the object thereof and one or more than one claim, the applicant shall be granted the term of 30 (thirty) days to meet those requirements. 

If the applicant complies with the requirements within the stated term, the application shall keep the first filing date. On the other hand, default in the fulfillment of said requirements within the stated term shall be deemed as the abandonment of the application. 

Those applications which do not meet the minimum requirements provided for in this Article shall be dismissed without further extensions.

ARTICLE 10. Regarding the publication of the application provided for in Article 26 of Law N� 17.164, the applicant shall pay the corresponding fees and file receipt thereof before the expiration of the term. On the other hand, default in the fulfillment of said requirement within the stated term shall be deemed as the abandonment of the application and the proceedings shall be filed. 

Regarding the advanced publications provided for in paragraph 2 of said article, the applicant shall file application therefor together with the receipt of the payment of the corresponding fee. 

ARTICLE 11. Oppositions to the registration of patent applications shall be filed within the strict time limit of 60 (sixty) days as from the publication date. The same shall be filed together with all the evidence attesting to the truth of the ground of action.

ARTICLE 12. The thorough examination of the application shall start after the payment of the corresponding fee. 

The non-payment of the thorough examination fee after the term of 120 (one hundred and twenty) days as from the publication date shall be deemed as the abandonment of the application. 

ARTICLE 13. All the remarks resulting from the thorough examination shall be included in a report. Said remarks shall be notified to the applicant who shall be granted the term of 90 (ninety) days as from the notification date to file his/her contentions. 

Together with the remarks resulting from the thorough examination the applicant shall be communicated those oppositions filed by third interested parties according to Article 31 of Law N� 17.164 as well as those remarks provided for in Article 9 hereof, when applicable. The applicant shall answer all the oppositions and remarks within the term mentioned in the previous paragraph. 

If new or subsequent elements arise during the above mentioned term and if said elements may affect the application patentability a new term of 90 (ninety) days may be granted. 
Those terms granted to answer the oppositions provided for in this article may be extended once, at the request of the applicant, by a maximum term of 90 (ninety) days. 

ARTICLE 14. Whenever the person in charge of the thorough examination so requires, the applicant shall file those reports and documents provided for in paragraph A of Article 22 of Law N� 17.164, together with the answer to the corresponding oppositions, within the term provided for in paragraph 1st of the previous Article. 

ARTICLE 15. If a patent application comprises more than one invention it shall be divided according to the provisions of Article 29 of Law N� 17.164. The applicant shall be granted a term of 90 (ninety) days as from the date of the corresponding notification to file the new divisional applications. 

The applicant may file one or more divisional applications, on his/her own initiative and prior to the termination of the thorough examination, providing the original application comprises or describes more than one independent invention. 

Divisional applications shall keep the filing date of the original application. Regarding all further aspects said applications shall be deemed as independent applications and shall follow the corresponding proceedings. 

CHAPTER II
RIGHTS GRANTED BY THE PATENT, 
EXCEPTIONS, LIMITATIONS AND FORFEITURE THEREOF

Section I
Transfer of and Changes to the Title to the Registration

ARTICLE 16. The application for the registration of the assignment or transfer of the rights derived from the ownership of a patent or a patent application provided for in Articles 36 and 38 of Law N� 17.164 shall be filed together with the assignment or transfer documents or the certified copy thereof and the receipt certifying the payment of the corresponding fee. 

If oppositions are filed against the application for the registration of the assignment contract said oppositions shall be notified to the interested party who shall be granted the term of 30 (thirty) days running as from the notification date to file his/her contentions before the corresponding resolution is taken. Said term shall be a strict time limit and shall not be extended. 

Section II
Patent Cancellation

ARTICLE 17. The cancellation of a patent right according to the provisions of Article 44 and 45 of Law N� 17.164 shall be applied for together with the corresponding evidence. Said application shall be notified to the patentee who shall be granted a term of 30 (thirty) days running, as from the notification date, to file his/her contentions. Once the evidence is duly incorporated to the proceedings and before the resolution is taken, the parties shall be notified and shall be granted the strict time limit of 10 (ten) working days to file their contentions. 

CHAPTER III
LICENSES AND OTHER USES WITHOUT THE AUTHORIZATION 
OF THE PATENTEE

Section I
Conventional Licenses

ARTICLE 18. The applicant for the registration of a license contract shall complete the corresponding application form and file it together with a certified copy of the contract or an abstract thereof, signed by both parties thereto.

Section II
License Offer

ARTICLE 19. A patentee wanting to offer his/her patent according to the provisions of Article 53 of Law N� 17.164, shall appear before the Industrial Property Office. The offer shall be published once at the Industrial Property Gazette. The patent annuity shall be reduced in half as from the date of the corresponding resolution.

Section III
Compulsory licenses and other uses without the authorization of the patentee

Paragraph I
Licenses and other uses by reason of failure to work

ARTICLE 20. The applicant for a compulsory license by reason of failure to work provided for in Article 54 of Law N� 17.164 shall appear before the Industrial Property Office and file the corresponding evidence. Said applicant shall likewise comply with the requirements of Articles 71 and 72 of Law N� 17.164. 

When filing his/her contentions according to the provisions of Article 74, paragraph 1st of Law N� 17.164, the patentee shall prove the circumstances impeding the patent exploitation, if applicable.

Paragraph II
Compulsory licenses and other uses without the authorization 
of the patentee on the grounds of public utility

ARTICLE 21. In those circumstances provided for in Articles 55 and 56 of Law N� 17.164, the Executive Power shall be entitled to grant, by express resolution, compulsory licenses or other uses without the authorization of the patentee. 

When the mentioned circumstances are comprised in the provisions of Paragraph 2nd of Article 71 of Law N� 17.164, reference thereto shall be included in the same resolution. 

The Executive Power shall make a public call to those companies interested in said exploitation and it may likewise invite those companies already well-known in the sector. 

Those applicants for the grant of licenses and other uses without the authorization of the patentee shall certify the fulfillment of the provisions of Paragraph 3rd of Article 57 of Law N� 17.164. 
They shall likewise certify the fulfillment of the provisions of Articles 71 and 72 of Law N� 17.164. 

Those offers filed by third parties interested in the license exploitation shall be duly communicated to the patentee who shall be granted the strict time limit of thirty (30) days as from the notification date to file his/her contention according to the provisions of Article 57 of Law N� 17 164. 

Before taking the corresponding resolution, the Executive Power may resort to the conciliation or arbitration instances. 

ARTICLE 22. In those situations known as national emergency or utmost urgency the Executive Power may omit the public call and, without any further step, grant the license or other uses without the authorization of the patentee with provisional and revocable character likewise guaranteeing the participation of third interested parties in the exploitation.

Paragraph III
Compulsory licenses and other uses without the authorization of the patentee
on the grounds of unfair competition

ARTICLE 23. In those circumstances provided for in Article 60 of Law N� 17.164, the licenses and other uses without the authorization of the patentee shall be granted by the Industrial Property Office after the corresponding resolution is taken by the competent administrative or judicial authority. 

At the request of the competent authority, the Industrial Property Office shall contribute with the required information and advice. 

The application for the license and other uses shall be filed together with the certified copy of the mentioned resolution and the certification of the fulfillment of the provisions of Article 72 of Law N� 17.164 and the conditions in which the license is applied for. 

The application shall be notified to the patentee who shall be granted the strict time limit of 30 (thirty) days as from the notification date to file his/her contentions. Before taking the corresponding resolution, the Executive Power may resort to the conciliation or arbitration instances.

Paragraph IV
Other compulsory licenses and other uses without 
the authorization of the patentee

ARTICLE 24. The application for other compulsory licenses and other uses without the authorization of the patentee provided for in Article 64 of Law N� 17.164 shall be filed together with the corresponding evidences. 

The applicant shall likewise certify the fulfillment of the provisions of Paragraphs 1st and 2nd of the mentioned Article. 

The application shall be notified to the patentee who shall be granted the strict time limit of 30 (thirty) days as from the notification date to file his/her contentions according to the provisions of Paragraph 1st of Article 74 of Law N� 17.164. The corresponding proceedings shall continue according to the provisions of the above mentioned Article.

Paragraph V
Dependent Patents

ARTICLE 25. The application for a compulsory license regarding a patented invention or utility model which cannot be exploited in the country without violating a previous patent according to the provisions of Article 69 of Law N� 17.164 shall be filed together with the corresponding evidence. The applicant shall likewise certify the fulfillment of the provisions of Article 70, paragraph A, and Articles 71 and 72 of Law N� 17.164. 

When filing his/her contentions upon the notification of the above mentioned application, the owner of the first patent shall be entitled to state his/her interest in obtaining a cross-license according to the provisions of paragraph B of Article 70 of Law N� 17.164.

Paragraph VI
General provisions and proceedings

ARTICLE 26. In those cases provided for in Articles 54 and 64 of Law N� 17.164, the proceedings provided for in Article 74 of said Law shall be followed, taking into account the provisions or Articles 20 and 23 hereof. 

In those cases provided for in Articles 55 and 60 of Law N� 17.164, previous resolution from the Executive Power or from the competent administrative or judicial authority shall be required. 
Once granted, the compulsory license may be modified in those circumstances provided for in Article 78 of Law N� 17.164. 

ARTICLE 27. The register of compulsory licenses and other uses without the authorization of the patentee created by Article 80 of Law N� 17.164 shall be kept and organized by the Industrial Property Office. 

CHAPTER III
REQUIREMENTS AND PROCEEDINGS FOR THE GRANT 
OF UTILITY MODEL PATENTS

ARTICLE 28. Provisions hereof shall govern Utility Model Patents provided for in Title III of Law N� 17.164 when applicable.

CHAPTER IV
REQUIREMENTS AND PROCEEDINGS FOR THE GRANT 
OF INDUSTRIAL DESIGN PATENTS

ARTICLE 29. The application for an Industrial Design patent shall be filed with the Industrial Property Office according to the provisions of Article 92 of Law N� 17.164 together with a graphic representation of the design applied for, showing the same from different angles to provide a suitable and complete description. 

In the event of filing a photographic representation of the design the same shall comply with the requirements established in paragraph 1st. If said photographic representation does not comply with said requirements it may be dismissed. 

ARTICLE 30. When the application for an industrial design does not meet the requirements of Article 91 of Law N� 17.164, the provisions of Article 8 hereof shall be applied, to all corresponding effects. 

ARTICLE 31. Oppositions filed by any interested party against the application for an industrial design patent according to the provisions of Article 95 of Law N� 17.164 shall be filed within the strict time limit of 30 (thirty) days as from de publication date. Said oppositions shall be filed together with all the corresponding vouchers attesting to the truth of the ground of action 

ARTICLE 32. Oppositions from third parties and oppositions ex-officio shall be jointly notified to the applicant who shall be granted the maximum term of 30 (thirty) days as from the notification date to file his/her contentions. 

ARTICLE 33. Provisions hereof shall govern Industrial Design Patents provided for in Title IV of Law N� 17.164, when applicable. 

CHAPTER V
TAX REGULATIONS AND FEES

ARTICLE 34. The Industrial Property Office shall grant exonerations, discounts and payment systems according to the provisions of Law N� 17.164, Article 113, paragraph 2nd, subparagraph A, regarding the payment of those fees provided for in Article 117 of said Law in the cooperation agreements subscribed with other education or research and development agencies or institutions. 

ARTICLE 35. Once the advisory opinion of the corresponding agencies and departments is provided, the Industrial Property Office may grant exonerations, discounts and payment systems according to the cases provided for in Law 17.164, Article 113, paragraph 2nd, subparagraph B, regarding the fees provided for in Article 117 of said Law, whenever said exonerations, discounts or payment systems are applied for to carry out production projects entailing the exploitation of patent rights in the country. 

ARTICLE 36. The Industrial Property Office may grant exonerations, discounts and payment systems according to the provisions of Law N� 17.164, Article 113, paragraph 2nd, subparagraph C, regarding the payment of those fees provided for in Article 117 of said Law in the event of inventors with small means. The following requirements shall be complied with in this event.

A) A) The application shall be filed regarding an invention belonging to the applicant. 

B) B) The applicant shall certify that, the moment he/she files the application, his/her incomes are 50 UR per month or less.

If the applicant obligations to pay sustenance and/or his/her liabilities as regards dependent relatives or any other similar circumstance so justify, the benefit may be granted when the applicant income are 75 UR per month or less. In this case the income of the other persons with the obligation to pay sustenance and the income of the other members of the family shall be also taken into account. 

If the Industrial Property Office is acquainted with the fact that the applicant�s means are above what he/she stated, said applicant shall not be granted exonerations, discounts or payment systems. 

CHAPTER VI
GENERAL PROVISIONS

ARTICLE 37. The term granted to answer the oppositions filed in those proceedings regulated by Law N� 17.164 shall consist in 30 (thirty) days. 

The Industrial Property Office may grant extensions upon well-founded requests from interested parties. Said extensions shall consist in the maximum term of 30 (thirty) days. 

ARTICLE 38. If the above mentioned requests are not expressly answered within the term of 5 (five) working days as from their filing date the extensions shall be deemed as duly granted. 

ARTICLE 39. Those applications which do not comply with the provisions of Law N� 17.164 or the provisions hereof may be dismissed without any further step. 

Likewise, upon failure to answer the oppositions filed in the proceedings within the term granted thereto or if the proceedings remain paralyzed during thirty days running by failure to file the required documents or any other cause imputable to the applicant, the Industrial Property Office may file the proceedings on the grounds of abandonment of the action under prosecution. 

ARTICLE 40. The Industrial Property Office shall be entitled to regulate the material aspects of the proceeding site. 

CHAPTER VII
PROVISIONAL CLAUSES

ARTICLE 41. Let Decree Regulating Law N� 10.089, dated September 4, 1942 and provisions thereto be hereby derogated. 

ARTICLE 42. The derogation provided for in the previous Article shall not affect those applications for invention patents, utility models and industrial designs already under prosecution at the entry into force of Law N� 17.164. Said applications shall continue the corresponding proceedings according to the provisions of Law N� 10.089 dated December 12, 1941 and Decree Regulating said Law, dated September 4, 1942 and provisions thereto. 

Invention patents, utility models and industrial designs filed after the entry into force of Law N� 17.164 shall be governed by the provisions of said Law and this Decree. 

ARTICLE 43. Those patents already in force at the entry into force of Law N� 17.164 shall be governed by the previous legislation with the exception of the situations provided for in Article 124 of said Law. 

ARTICLE 44. Those applications for patents filed under the provisions of Article 70.8 of the Agreement on Trade Related Industrial Property Rights (TRIPS) (Law 16.671 dated December 13, 1994) shall be governed in its entirety by the provisions of Law N� 17.164. 

To the effects of the corresponding publication, the term provided in Article 26 of Law N� 17.164 shall start at the entry into force of said Law or at the filing date of the corresponding application, whichever is later in time. 

ARTICLE 45. Let these presents be duly communicated, published, etc. 

SANGUINETTI, PRIMAVERA GARBARINO.