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DERECHOS DE PROPIEDAD INTELECTUAL
NATIONAL LEGISLATION - URUGUAY
Law No. 17.164
Let the rights and
obligations regarding invention patents,
The Senate and the Chamber of Representatives of the Republic of Uruguay met in General Assembly DECREE:
ARTICLE 1- This Law regulates the rights and obligations regarding invention patents, utility models and industrial designs according to the public interest and national development targets in the different areas thereof.
ARTICLE 2- The moral rights of the inventors and designers to be recognized as authors of his/her intentions and creations is inalienable and imprescriptible and shall inure to the benefits of their heirs.
Patrimonial rights derived from inventions, utility models and industrial designs shall be protected by the grant of patents. Said granted rights shall be certified by the corresponding patent certificates
The inventor shall be mentioned as such in the patent certificate and in the publications and official documents related thereto, unless the corresponding waiver thereof is filed by the patentee in writing.
Any agreement--dated before the patent application is duly filed--by which the inventor waives his right to be mentioned in the corresponding patent certificate, shall be null and void.
ARTICLE 3- The right granted to the inventor or designer by virtue of a patent enters into force as from the issuing of the resolution granting such patent, notwithstanding the right of priority and those rights derived from the filing of the corresponding application.
ARTICLE 4- The State Government does not guarantee the newness nor the worth of patented inventions and is not liable for the capacity as inventor of the patentee.
ARTICLE 5- National or foreign physical or legal persons may be patentees of those patents regulated hereof.
ARTICLE 6- Those provisions regarding national treatment and right of priority established in international treaties ratified by the country as far as patents are concerned shall be applied in the same conditions to nationals of those States being a party to said treaties and to those persons who, by operation of law, are to be treated in the same manner as nationals of these countries.
ARTICLE 7- In the absence of international agreements foreigners shall have the same rights as nationals. The Executive Power shall be entitled to limit the application of this provision to nationals of those countries granting suitable reciprocity or to persons who, by operation of law, are to be treated in the same manner as nationals of said countries.
ARTICLE 8- New inventions of products or proceedings entailing an inventive activity and having industrial applicability are deemed patentable inventions.
ARTICLE 9- The invention is deemed novel when it is not within the state of the art.
By state of the art it is meant the know-how that has been made known to the public before the application filing date or, if this is the case, before verified priority, through an oral or written description or by any other means, within the country or abroad, so that said know-how can be executed.
The contents of an already filed application whose corresponding steps are being taken in the country, with a filing date or, if this is the case, with a priority date, prior to the date of the application under examination, shall also be considered within the state of the art, providing said contents will be kept in the first application when published.
ARTICLE 10- Novelty shall not be affected by the disclosure of the invention made within the term of one year before the filing date of the application or the invoked priority, providing said disclosure comes directly or indirectly from actions performed by the inventor as well as by his/her heirs or by third parties, based on information obtained directly or indirectly from said inventor.
ARTICLE 11- An invention entails inventive activity when said invention cannot be obviously deducted from the state of the art by a subject matter expert.
ARTICLE 12- An invention is deemed to have industrial applicability when object thereof can be used in the industry, understanding the latter in its widest meaning.
ARTICLE 13- The following shall not be deemed inventions under the provisions hereof:
Discoveries, scientific theories and mathematical methods.
Plants and animals, with the exception of microorganisms, as well as essentially biologic processes for the production of plants or animals, with the exception of non-biologic or microbiologic processes.
Schedules, plans and rules of the game as well as commercial, accounting, financial, educational, advertising, draw and supervision principles or methods.
Literary or artistic works or any other aesthetic creation as well as scientific works.
Computing programs considered as isolated items.
Different manners of reproducing information
Biological and genetic material, as found in Nature
ARTICLE 14- The following are not deemed patentable inventions:
Diagnosis, therapeutic and surgical methods for the treatment of persons or animals.
Those inventions contrary to public order, socially accepted manners, public health, population nutrition, security and environment.
ARTICLE 15- Already patented products or processes comprised within the state of the art -under the provisions hereof- shall not be the object of a new patent on the grounds of entailing a different use from the use comprised in the initial patent.
ARTICLE 16- The title to the patent registration shall be vested on the inventor or his/her heirs and may be transferred by inter vivos action or on death of the previous owner.
If many persons make the same invention independently from one another, the patent shall be granted to the first person who files the application or to the person who invokes the priority granted first to the said invention or to his/her successors in title.
ARTICLE 17- Whenever an invention is made in the performance of a labor or service contract whose total or partial purpose is the research activity the title to the patent resulting from said research shall be vested on the employer, unless otherwise provided.
Whenever the personal contribution to the invention on the part of the employee and the importance of the said contribution to the company are obviously in excess of the explicit or implicit contents of the contract or the labor relation, the employee shall be entitled to a supplementary remuneration.
ARTICLE 18- Whenever the employee makes an invention related to his/her professional activity in the company and attainment thereof is mainly due to the knowledge acquired in or the utilization of means provided by the company, and the research activity is not within the employee's duties, said employee shall communicate the fact in writing to his/her employer.
If the employer notifies his/her interest in the invention in writing and within the term of ninety days, the title to the patent registration shall be vested on both.
Any invention whose patent application is filed within the term of one year as from the cancellation of the labor contract shall be deemed to have been developed during the labor relation.
ARTICLE 19- Inventions made during a labor relation and not comprised in the previous articles shall exclusively belong to the author thereof.
ARTICLE 20- Any contractual provision less favorable to the inventor than the ones herein provided shall be void and null.
ARTICLE 21- Invention patents shall be in force during the term of twenty years as from the application date.
ARTICLE 22- Applications for the registration of invention patents shall include the following:
Name of the inventor and name of the applicant with the corresponding address.
Classification of the applied patent.
Title of the invention
Clear and complete description of the invention.
One claim or more than one.
Summary of the invention.
Reference to fees payment.
Date, country and number of the invoked priority application, when proper.
Documents certifying assignment of rights, when proper.
ARTICLE 23- Whenever the preliminary formal examination of an invention patent application reveals that the same does not comply with the requirements mentioned in the previous article but it includes the identification of the applicant, the description of the object and the corresponding claims, the applicant shall be granted a stated term to comply with said requirements. Said term, whose maximum extension shall be established in the regulations hereof, shall not exceed ninety days. If the corresponding requirements are duly met within the stated term the application shall maintain the same 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.
ARTICLE 24- Whenever a foreign priority is claimed according to paragraph D), article 4th of the Paris Convention for the Protection of the Industrial Property (Decree-Law N° 14.910 dated July 19, 1979), the applicant shall be granted a term of ninety days to add a certified copy of the application and the filing date, issued by the corresponding authority of the country where said application was filed. Failure to file said certification shall entail the loss of the right of priority.
ARTICLE 25- In the event of applications regarding microorganisms, the filing of the biologic material required for the description of the corresponding object shall be done before the institutions authorized by the Industrial Property Office of the Ministry of Industry, Energy and Mining until the ratification of international agreements regarding the matter.
ARTICLE 26- Once the required formalities and steps are duly complied with the patent application shall be published in the Industrial Property Gazette after the term of eighteen days as from the day following the filing date or the day following the priority date, as appropriate.
The publication may be done earlier, at the request of the applicant.
ARTICLE 27- Applications for the registration of invention patents, utility models or industrial designs may, at the request of the interested party and with the agreement of the Examining Office, become in another patent class before the corresponding resolution is issued.
ARTICLE 28- In those cases provided for in the previous article the applicant shall make a new publication of the application which shall maintain the filing date of the original application.
When the conversion is applied for the corresponding fees are to be paid.
ARTICLE 29- The application for a patent registration shall comprise only one invention or several inventions, providing said inventions are mutually related so that they integrate an only inventive concept.
When the examination of an application reveals that it does not comply with the above mentioned requirement, the applicant shall divide said application in as many divisional applications as necessary.
Divisional applications shall preserve the same filing date as the original.
ARTICLE 30- Applications for the registration of patents shall not be modified except in the following cases:
To correct mistakes in data, text or graphic expressions
To clarify, specify, limit or restrict object thereof.
Whenever modifications are deemed appropriate by the technicians in charge of the examination.
No modification, correction or clarification shall be allowed whenever the same entails an extension of the information contained in the original application.
ARTICLE 31- Any third interested party shall be entitled to file a well-founded opposition to the patent application within a strict time limit to be fixed by the regulations hereof. Said term shall be deemed to start as from the publication date. The filing of oppositions shall not entail the stay of the proceedings and the party filing them shall not become a party to said proceedings.
ARTICLE 32- A thorough examination of the application shall be carried out to determine if the applied invention meets the patentability requirements and conditions herein provided.
With the above mentioned purpose, the following actions may be taken:
Require the applicant the filing of a copy of the search for anteriorities, thorough examinations and further documentation to which he/she may have access.
Apply for the advisory opinion of institutions developing scientific and technological activities.
Resort to patent documents, search and exam reports and similar documents, issued by other patent offices.
Any remark resulting from the thorough examination shall be filed in only one act, except when new or subsequent elements arise which may affect patentability.
The applicant shall be granted a strict time limit to be fixed by the regulations hereof to answer the opposition.
ARTICLE 33- Once all the requirements provided for herein are duly complied with resolution shall be taken regarding the grant of the patent registration and the corresponding patent certificate shall be issued, when applicable.
ARTICLE 34- Patents grant to the patentee the right to prevent third parties from executing the following actions without his/her authorization:
When the patent has been granted for a product: to manufacture, offer, sell or use said product or to import or store said product with any of the mentioned purposes.
When the patent has been granted for a process: use said process or execute any of the actions mentioned in paragraph A) regarding those products obtained by means of said process.
ARTICLE 35- The extent of the protection granted by a patent is determined by the claims thereof which shall be construed according to the description and the corresponding drawings.
ARTICLE 36- Rights derived from the ownership of a patent or an application for the registration of a patent may be transferred or assign by the patentee or his/her heirs, either totally or partially, by succession or inter vivos action. These actions shall be valid against third parties upon their registration in the corresponding register.
ARTICLE 37- The payment of the corresponding fees in the event of partial transfer or assignment of a patent or application for the registration of a patent shall be on the patentee account unless otherwise agreed upon.
ARTICLE 38- Whenever several interested parties apply for the registration of a patent, transfer a patent or make a license agreement, they shall expressly state if they are joint-owners or partners. Without said statement the patent certificate shall not be granted and the transfer or contract shall not be registered.
ARTICLE 39- Rights granted by a patent shall not affect the following actions:
Those private actions performed with aims other than industrial or commercial, providing said actions do not cause an economic prejudice to the patentee.
Preparation of a medicine for an individual patient, under medical prescription and manufactured under the direction of a qualified professional.
Among other, those cases of preparation of a medicine under medical prescription, for an individual patient, manufactured under the direction of a qualified professional.
Those actions made exclusively with experimental aims, even the ones made for the preparation of a future commercial exploitation, carried out within the term of one year before the patent expiration.
Those actions targeted to educational as well as scientific or academic research aims.
Import or introduction of small volumes of goods with non-commercial aims which are part of the personal luggage of the passengers or are sent in small consignments.
ARTICLE 40- Once a patented product starts to be legally commercialized within the country or abroad by the patentee or by a third party with the patentee consent or otherwise legally authorized, said patentee shall not be entitled to prevent any person from using, importing or commercializing the patented product.
Those products or processes violating industrial property rights (Part III, Section 4, World Trade Organization ADPIC Agreement: Agreement on Trade Related Industrial Property Rights) shall not be considered as legally commercialized products.
ARTICLE 41- The patentee shall not be entitled to obstruct or hinder those actions carried out in good faith by third parties, even if said actions are not disclosed, providing said third parties were already manufacturing the product or using the process object of the invention or have performed formal preparations to carry out said manufacture, use or exploitation before the filing date of the application for the patent registration or the priority date.
Third parties shall be entitled to continue said actions to meet the company needs to the extent required by said needs and regarding the obtained products.
Said right shall only be transferred with the corresponding part of the company or of the company intangible assets beneficiary thereof.
ARTICLE 42- Inventions comprised in monopolies authorized to the State or to civil persons are nevertheless patentable. Industrial or commercial working thereof shall be carried out only upon agreement with the corresponding monopolist or after the monopoly is no longer in force.
ARTICLE 43- Rights to be derived from a patent application or an already granted patent may be expropriated by the State according to the relevant provisions.
Said expropriation may be limited to the right to use the application or the patent to meet State needs.
ARTICLE 44- Patents shall be null and void:
When grant thereof violates the patentability conditions and requirements herein provided.
When description thereof is incomplete or inaccurate not allowing the full appraisal of the subject matter of the invention.
When claimed matter was not included in the original application, according to the provisions hereof.
ARTICLE 45- The grant of a patent to whom is not entitled to obtain it shall not be valid.
The corresponding opposition can be filed by the person stating to be the legitimate owner and shall prescribe in the term of five years as from the grant date or in the term of three years as from the date when the invention stars to be worked in the country, whichever term expires first.
ARTICLE 46- Whenever the opposition affects total or partially any of the patent claims the corresponding resolution shall be limited to said claim and the extent of said resolution shall be clearly stated, when applicable.
ARTICLE 47- The Industrial Property Office shall be the competent authority with jurisdiction on the matter and resolutions thereof may be contested according to the provisions of articles 317 and following ones of the Constitution of the Republic and provisions thereto.
ARTICLE 48- Lawfully granted patents shall expire in the following cases:
At the expiration of their agreed term of validity.
Upon default in the prompt and full payment of the corresponding annuities according to the provisions hereof.
ARTICLE 49- The patentee shall be entitled to waive his/her rights as such by filing a waiver in writing. Said waiver may be filed as regards the whole patent or as regards one or more than one of the patent claims.
ARTICLE 50- The patentee or the applicant for a patent registration shall be entitled to grant licenses for the working of the same. Said licenses shall be valid and in force against third parties upon registration thereof in the corresponding register.
ARTICLE 51- The following provisions shall be applied unless otherwise provided:
Licenses shall be valid and in force regarding all working or commercialization actions concerning the patent object, during the corresponding term of validity, throughout the territory of the country and regarding any and all applications of said object.
The licensee shall not be entitled to transfer or assign his/her license not even in the form of the grant of a sub-license.
Licenses shall not be exclusive. The licensee shall be entitled to grant other licenses for the working of the patent in the country or to work it him/herself.
Notwithstanding those rights granted by the patentee and upon the absence of initiative on the part of said patentee, the licensee shall be entitled to take the necessary measures to defend the patent.
ARTICLE 52- Let those clauses or conditions included in a license agreement and producing a negative effect in the competition or constituting unfair competition, or enabling an abuse on the part of the patentee or his/her dominant position in the market, be hereby prohibited.
Said clauses and conditions shall include the ones producing the following effects:
Effects detrimental to commerce.
Exclusive conditions of retrocession.
Impediments to opposition against the validity of dependent patents or licenses.
Limitation to the licensee in the commercial or industrial areas providing said limitation do not derive from the rights granted by the patent.
Limitation to the exportation of the product protected by the patent towards those countries with which there is an agreement to establish an economic and commercial integration zone.
ARTICLE 53- The owner of an invention patent domiciled in the country shall be entitled to authorize the working of his/her patent to any interested party with certified technical expertise and economic means to carry out an efficient working. The offered patent shall have the corresponding annuity reduced in half. The offer shall be regulated by those provisions governing conventional licenses, when applicable. Upon the lack of an agreement regarding the license remuneration any of the parties thereof shall be entitled to resort to the proceedings provided for in articles 74 and 75 hereof.
Continues on with Section III Compulsory licenses and other uses granted without the authorization of the patentee
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