PROSECUTION GUIDELINES

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You will find here all the important information about filing trademarks, designs and patents.

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Uruguay

GDP: $59,597 BILLION

IMPORTS: $11,323 BILLION

POPULATION: 3,449,299

TOTAL AREA: 176,215 KM2

OFFICIAL LANGUAGES:SPANISH

CURRENCY: URUGUAYAN PESO ($U) (UYU)

Local time:
WIPO-administered Treaties:

Contracting Party of the Paris Convention: YES.

Contracting Party of The Hague System: NO.

Applicable Law:

Law No. 17,164. TRIPS

Grace period for filing applications, from disclosure:

6 months.

Multiple design applications -one application for different embodiments-available:

YES.

Formal filing requirements:

Power of Attorney.

Drawings displaying all views of the design.

Description not required.

Priority document when applicable, translated by local sworn translator.

Locarno classification:

YES

Deferred publication:

YES. 12 months.

Registration Proceeding Outline:

Filing. Publication request within a 12 months term since the priority date, upon which the application is effectively published within 1-2 months. Payment of examination fees. Decision.

Opposition:

YES. Oppositions can be filed within 60 days from the publication. Nullity actions are also possible, within 5 years from granting or within 3 years from exploitation, whichever term expires first.

Average time from filing to grant:

12-18 months.

Term of Protection and Maintenance:

10 years, extendable for 5 additional years (payment of the renewal fee has to be made in the tenth year, requesting the extension for the additional 5 years). Annuities have to be attended in order to preserve the rights.

WIPO-administered Treaties:

Contracting Party of the Paris Convention: YES.

Contracting Party of the Madrid System: NO.

Trade Mark Law in force:

Law 17.011 dated 25 September 1998

(Regulatory Decree 34/99 of 3 February 1999)

Classification:

Nice classification, 11th edition.

Multiclass Applications:

YES.

Registrable trade marks:

Words, names, acronyms, letters, numbers, devices, combinations of colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks and any sign capable of distinguishing goods or services.

Formal filing requirements:

• Power of Attorney merely signed (no legalisation and no notarisation required) within 30 days from the application date.

• Certified copy of the priority application and its translation into Spanish within 90 days from the application date.

Examination:

Absolute grounds for refusal: YES.

Relative grounds for refusal: YES.

Opposition period:

30 days from publication date.

Average time from filing to grant:

Approximately 20-24 months, unless any obstacles were raised.

Term of protection:

10 years from the date of registration.

Use requirements:

YES. As of 1 January 2014 cancellation can be requested if a trade mark has not been used for 5 years, counting from the registration date. Cancellation actions due non-use are possible as of 1 January 2019. Partial cancellation is not possible.

Renewal terms:

6 months prior to renewal date.

Grace period: 6 months.

Link to Trade Mark Office:

http://www.miem.gub.uy/

WIPO-administered Treaties:

Contracting Party of the Paris Convention: YES

Contracting Party of the Patent Cooperation Treaty (PCT): NO.

Patent Law in force:

Patent Law 17.164/2000

Types of protection available:

Patent of Invention; Utility Model

First filing requirements with the local Patent Office for inventions made by nationals:

NO.

Formal filing requirements:

• Power of Attorney merely signed (no legalization required) within 30 days from filing.

• Assignment document from the inventors merely signed (no legalization required) within a 180 working-day term from filing. Not required under certain circumstances.

• Certified copy of priority application within 180 days from filing. The translation of the priority application must be signed by a sworn registered local translator.

Filing of the patent application in a foreign language:

NO. Late submission of the Spanish translation is acceptable within a 30-day term provided that at least, Spanish translation of the claims and abstract and the first pages of the specification are submitted upon filing the application.

Substantive examination must be requested by the applicant:

YES, within 120 days from publication.

Search report must be requested by the applicant:

NO

Observations by third parties:

YES, within 60 working days from publication.

Opposition:

YES, within 60 working days from publication.

Average time from filing to grant:

8 years

Term of protection for patents:

20 years from filing date.

Term of protection for utility models:

10 years from filing date and could be renewed for 5 more years the same for Industrial Designs

Differences between utility model and patent:

• UM suitable for utensils, instruments, tools, apparatus, devices, or any parts or improvements thereof, but not to chemical products, methods or uses;

• Lower threshold for inventive step.

Maintenance:

Yearly after grant.

Marking of the product with the application/ patent number:

NOT mandatory.

Compulsory licensing:

YES

Link to Patent Office:

http://www.dnpi.gub.uy/