Uruguay: The New Patent Legislation: An Overview

As a reaction to the TRIPS agreement, and in order to modernize IP laws which were more than half a century old (the Trademark Act was approved in 1940, and the Patent Act, in 1941), the trademark and patent laws were revised, and a new Trademark Act (Nº 17.011 of September 25, 1998), was first approved.

As to patents, the proposed bill was submitted to the Legislative in December, 1997, and was finally approved on September 20, 1999. The bill originated in the Uruguayan Patent and Trademark Office, a governmental agency subordinate to the Ministry of Industry, Energy and Mining. The P.T.O. officers were mainly responsible for drafting the provisions of the bill, following – as indicated in the Executive Power Message to the Legislative - the guidelines of the Paris Convention for the Protection of Industrial Property (Stockholm Act of July 14, 1967), the TRIPS Agreement, the patent laws of Brazil and Argentina, the Munich Convention for the Creation of a European Patent, the Spanish Patent law of 1986, and drafts prepared by the World Intellectual Property Organization.

Initial consideration of the new bill gave raise to heavy discussion, mainly in regard to patentability of pharmaceuticals and chemical products, and compulsory licensing provisions, beteween the local pharmaceutical industry, and representatives for international pharmaceutical companies.

The bill was finally passed on September 2, 1999, - substituting entirely its previous patent legislation, the former Patent Law Nº 10.089 of December12, 1941 and the corresponding regulations regarding Utility Models and Industrial Designs.

According to its provisions, the new Act would enter into force and effect 120 after its publication in the Official Gazette. Said publication was effected on September 20, 1999, and the law entered into force and effect on January 18, 2000.

The main modifications which the new Patent Act introduced, in relation to the previous 1941 Patent Act are as follows:

The new Patent Act governs rights and obligations related to

• Patents of Invention
• Utility Models
• Industrial Designs

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.

It is tapplicable, therefore, the "first to file" rule. In the event that the same invention has been created by several unrelated persons or teams of inventors, the patent will be granted to the one which first files the application at the Patent Office (art. 16º).

For the first time, tne 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 th the employer, except as otherwise agreed upon by the parties.

For applicability of this provision, it is essential that the purpose of the contract between the employee and the company/employer, is investigation in the relevant field of art to which the newly developed patent refers. Accordingly, the employment agreement must clearly refer to the investigation activities which fall into the scope of the contract, and which may give raise to new patentable inventions, for the benefit of the employer.

On the contrary, articles 18 provides that if the employee develops an invention in the course of his professional activity as employee of a company, which exceeds the scope and purpose of said work relationship, but for which the employee used technical means or knowledge to which he had access by virtue of his employment, he will communicate his finding to the employer. The company has a 90-day term to notify the employee/inventor, of its interest in the patent, in which case the patent will pertain in common to each party (employer and employee). The new Patent Act expressly forbids inclusion in employment agreements, of clauses which are less favourable to the employee than those contained in articles 17 and 18 of the Act (discussed above).

One of the most important innovations introduced by the new Patent Act has been the broadening of the patentable subject matter.

Article 8º of the New Act contains a general definition of patentable subject matter, establishing that are patentable in Uruguay

"the inventions of products or processes, that imply an inventive step and are capable of industrial application".

This entails - in line which the provisions of article 27 of TRIPS - that patents may be granted for any invention - whether a product or a process - in all fields of technology, provided that they are

• new
• involve an inventive step, and
• are capable of industrial application.

Patentable subject matter now includes, among other things,

• chemical products and
• pharmaceutical compositions,

which were excluded of patentability under the previous legislation (the 1941 old Patent Act).

Regarding Plant Variety Rights (PVR), Uruguay adopted a sui generis form of protection, by means of a special legislation on PVR, protection of which must be sought before the Instituto Nacional de Semillas of Uruguay – INASE - (the National Institute of Seeds).

The following do not constitute patentable subject matter, according to the provisions of article 13 of the new Patent Act, among other things:

• Discoveries, scientific theories and mathematical methods.
• Plants and animals other than microorganisms, and essentially biological processes for the production of plants and animals other than non-biological and microbiological processes.
• Computer programs per se.
• Biological or genetic materials, as found in nature.

In addition, the following do not constitute patentable subject (art. 14º of the Act):

• Diagnostic, therapeutic and surgical methods for the treatment of humans or animals.

As per the new Patent Act, the term of validity of a patent of invention shall be 20 (twenty) years counted from the application date. This differs from the previous patent legislation ,which established a 15-year term counted from the granting date of the application.

The old Patent Act of 1941 provided for "revalidation patents", which are not contemplated in the new Patent Act.

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.

Notwithstanding the foregoing, when - as an outcome of the substantial examination of the application – it is found that the application did not fulfill this requirement, the applicant may divide the application in so many applications as necessary, and these divisional applications will maintain the same filing date of the first applicaton.

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 institutios which are authorized under the Budapest Agreement), until Uruguay ratifies the international agreements related to this matter.

Article 7º of the Patent Act Implementing Regulation dated January 24, 2000, establishes that until other institutions are designated, the applicant shall effect the deposit at any of the international deposit authorities recognized by the "Budapest Agreement on International Recognition of Microorganisms Deposits Regarding Filing of Patent Applications" of April 28, 1977.

The new Patent Act introduced significant modifications to the former patent registration procedure, including a new step: requirement to applicant to expressly request Substantial Examination of the application before the Uruguayan Patent Office, after publication of the application in the Industrial Property Bulletin.

The main steps involved in the current registration procedure procedure after the new Patent Act are:

• Filing of application.
• Publication of the application in the Industrial Property Bulletin (within 18 months counted from filing date or from priority date (if applicable).
• Request of Substantial Examination by the applicant (within 120 days counted from the date of publication of the application in the Industrial Property Bulletin, provided prior payment of the corresponding official fee has been effected).
• In case no objections are raised by the Examiners, the Patent shall be granted. Payment of registration fee must be effected upon granting of the patent, and the respective Registration Certificate will be issued at applicant’s request.

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).

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.

A patent of invention application shall contain the following:

• Name of inventor and of applicant and their respective addresses.
• Type of patent applied.
• Title of the invention.
• Patent specification.
• Claims.
• Abstract.
• Proof of payment of the filing fee.
• Date, country and number of the application of which priority is claimed, if applicable.
• Assignment documents, if applicable.

The minimum requirements to obtain a filing date are the following:

• Name and address of applicant.
• Patent specification.
• Claims.

Upon compliance with these requirements, the applicant shall obtain a filing date subject to the specifications stated below.

In this case, the Patent Office will grant the applicant a 30-day term in order to comply with the application requirements, in which case it maintains the filing date. On the contrary, if these requirements are not complied, the application will be considered abandoned.

Articles 99 and 107 of the new Act regulate the actions and remedies regarding Patent Infringement, providing the owner of a patent with the possibility of pursuing civil and criminal actions against any act of infringement of his patent rights.

As per the provisions of article 99 of the new Act, it constitutes a relevant innovation the recognition of the right to claim for the infringing acts occurred between the publication of an application and its granting, disposition that finally ends past doctrinaire discussions with regard to the date of rights acquisition by the owner of the patent and his consequent right to claim indemnification in case of infringement.

In addition to civil actions pursued in order to obtain an indemnification for the injury suffered because of the infringement, the patent is protected by criminal dispositions.

Whoever infringes any right protected by patent of invention, will be punished with penalty of imprisonment for 6 months to 3 years.

In any case, subject to the provisions of article 106 of the new Act, the corresponding authorities may seize infringing products as well as the implements mainly used for their production whose destiny will be decided together with the Uruguayan Patent and Trademark Office.

In accordance with the previous legislation, it is not required the patent exploitation in order to keep into force the registration of a patent of invention, and absence of use does not constitute a reason for nullity, cancellation or extinction of the patent rights.

The new Act establishes a License regime for those cases of non-exploited patents, which may be requested by interested third parties after the expiration of three years from the granting date of the patent or four 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.

The concept of exploitation is very ample which 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 if exploited by the owner (article 54).

Another feature of interest is the provision that establishes a grace period for disclosure purposes previous to the application filing, held by the inventor, his successors or third parties based on information obtained directly or indirectly from the inventor.

Overall, the new Patent Act constitutes a substantial improvement over the former legislation, and harmonizes the patent regime in Uruguay with modern legislations and international treaties. While the law will require future amendments in regard to controversial issues (such as the license regime), in order to accommodate to the fastly evolving global scenario, it is undoubtedly a useful and modern tool which will enable a better protection of patent rights in Uruguay.