Patents and Trademarks
An insight into patents and trademarks in Uruguay. Prepared in association with FERRERE, a leading law firm in Uruguay, this is an extract from The Pharma Legal Handbook: Uruguay, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
For trademarks, the basic requirements are novelty, fancifulness and originality. The trademark must be inherently registrable, that is to say, it cannot be descriptive of the goods or services it intends to identify and it must be clearly different from existing registrations/applications for the same or similar goods.
Basic patentability requirements are novelty, inventiveness and industrial application.
2. What agencies or bodies regulate patents and trademarks?
The local patent and trademark office is called Industrial Property National Office (DNPI) and is a government agency pertaining to the Ministry of Energy, Industry and Mining (MIEM).
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
The following are not considered inventions:
- Discoveries, science theories, mathematical methods.
- Plants and animals, except microorganisms and essentially biologic methods for the production of plants or animals, with the exception of non-biologic or microbiologic procedures.
- Schemes, plans, gaming rules, commercial, accounting, financial, educational, advertising, draw, auditing principles or methods.
- Literary, artistic, science and aesthetical works,
- Software per se.
- Information reproduction media.
- Biologic and genetic matter as existing in nature.
The following are not patentable:
- Diagnosis, therapeutic and surgical methods for the treatment of humans or animals.
- Inventions contrary to public order, good uses, public health, nutrition and safety or the environment.
- Second uses.
In principle products, substances and processes that are not included in the above categories and meet the patentability requirements would be protectable.
In theory there are no limitations to the goods and services that can be protected by a trademark.
4. How can patents and trademarks be revoked?
The decisions of DNPI which grant registration of patents and trademarks are subject to revocation actions. Any interested party who proves to have a personal, direct and legitimate interest can request revocation of these decisions. The deadline for filing a revocation action is only ten days as from receipt of official notice of the decision or publication thereof. If the revocation action is not successful a final appeal for the annulment of the decision can be filed with the Contentious Administrative Court.
Trademark and patent registrations are also subject to annulment.
Main grounds for annulment of a patent are:
- That it does not fulfill the patentability requirements or the grant is in some other way contrary to the legal provisions.
- That the specification is incomplete or inaccurate and does not permit to clearly identify the object of the invention.
- That the claims include matter that is not supported by the specification.
Main grounds for annulment of a trademark are:
- It is not inherently registrable.
- It is confusingly similar to a prior mark.
- It was granted without the authorization from a third party required in certain cases (such as signs that identify foreign states and international organizations, characters or other works protectable by copyright, the name and image of a specific person).
- It constitutes a reproduction, copy or imitation of a famous mark.
- It leads to presume that its owner intends to engage in unlawful competition
Trademark registrations are vulnerable to cancellation for non-use when not in use for a period of five years.
5. Are foreign patents and trademarks recognized and under what circumstances?
A foreign trademark not registered in Uruguay may be recognized, to the effect of preventing registration or seeking the annulment of a Uruguayan trademark in the following circumstances:
- if the foreign trademark owner can prove that the mark is locally well known and the Uruguayan mark constitutes a reproduction, copy or imitation thereof.
- if the foreign trademark owner can persuade the authorities by adequate evidence that the Uruguayan mark leads to presume that its owner intends to engage in unlawful competition.
Foreign patents are not enforceable in Uruguay.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
Apart from the items mentioned in answer #3 above, inventions which are contrary to public order, good customs, public health, public nutrition or the safety of the environment are not patentable. Trademarks that consist in expressions or drawings contrary to public order, morals or good customs are not registrable.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
The registration of a patent or trademark license agreement with a foreign licensor before the DNPI is optional and not mandatory. In the case the license agreement is registered, the license shall be enforceable before third parties.