Uruguay is a member of the World Intellectual Property Organization (WIPO), and a party to the Bern and Universal Copyright Conventions, as well as the Paris Convention for the Protection of Industrial Property.
Approval by Uruguay of the Gatt agreement on TRIPS (Trade-Related Aspects on Intellectual Property Right, Including Trade in Counterfeit Goods), by law Nº 16.671 of December 13, 1994, promoted the revision of the various rules and regulations in Intellectual Property.
The main modifications which the new Patent Act introduced, in relation to the previous 1941 Patent Act are as follows:
Scope Of Rights in the New the Act
The new Patent Act governs rights and obligations related to:
- Patents of Invention
- Utility Models
- Industrial Designs
Acquisition of Rights
The right to a patent in Uruguay is obtained only through registration thereof before the Uruguayan Patent Office.
According to Art. 3º of the new Patent Act, the right to a patent is conferred by the resolution of the Uruguayan Trademark Office which grants the patent, without prejudice of the priority rights, and those rights which arise as of the date of filing of the application.
Inventions by Employees
For the first time, the new Patent Act regulates the issue of employees made by employees. The new Act, in article 17, provides that when an invention has been developed in compliance with an employment relationship, or as a work for hire in a contract the main purpose of which is investigation, the right to the patent so developed will pertain to the employer, except as otherwise agreed upon by the parties.
Unity of Invention
The new Patent Act imposes the requirement of Unity of the Invention, establishing in its art. 29º, that a patent application must comprise one invention only or a group of inventions so interrelated as to form a single inventive concept.
Regarding inventions related to microorganisms, article 25º of the new Patent Act establishes that the deposit of the corresponding biological material – required for this type of applications – may be effected at institutions authorized by the Uruguayan Patent Office (which has initially designated the same institutions which are authorized under the Budapest Agreement), until Uruguay ratifies the international agreements related to this matter.
Annuities required to keep a Patent in force and effect must be paid during the 60 days preceding the expiration date of each year of validity of the patent (article 112º).
Nullity and Extinction
Subject to the provisions of articles 44º, 45º and 46º of the new Act, a Patent shall become null or extinct under the following circumstances:
- When the patent is granted contradicting the patentability requirements established in this Act.
- When the specifications or drawings are incomplete or inaccurate not allowing the definition of the object of the invention.
- When the patent is granted to someone who lack the right to obtain it.
- Upon expiration of its term, or due to lack of payment of the annual official fees.
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