Reduction in the number of office actions during patent examination
On October 26, 2018, the Uruguayan PTO published Official Notice 5/2018 which establishes a maximum number of two office actions issued during the substantive examination of patent applications and utility models.
This Official Notice, which will enter into force on November 1, 2018, revokes previous Notice 11/2015, which stated that the Patent Office could issue a maximum of three office actions during the examination of patent, utility models and industrial design applications.
Regarding the terms to file a response to the office actions issued during the examination of patent and utility model applications, Notice 5/2018 further establishes that:
– The term to respond to an office action issued during substantive examination will be of 45 days, which can be extended once for an additional 45-day term.
– If after the reply to the office action or within the deadline to answer it, new elements arose, which could affect the patentability, the examiner may issue a further single office action granting a term of 30 days to respond, extendable once for an additional 30-day term. In these cases, the examiner must expressly indicate the new elements causing the issuance of a further office action.
Source: http://www.miem.gub.uy…
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Parliament debates draft law to join Patent Cooperation Treaty
by Marta Garcia
In March 2017, the Uruguayan government sent a draft law to Parliament to become a member of the Patent Cooperation Treaty (PCT), which is now being discussed before proceeding to vote.
In 2016, the Uruguayan Patent Office (National Directorate of Industrial Property) organized different activities and events to promote and disseminate info regarding the PCT system. Moreover, in previous years, the Uruguayan government had expressed on several occasions its intention to join the PCT. However, until now the necessary steps have not been taken to finally become a PCT member.
The draft highlights the advantages of the PCT system for both applicants and patent offices. For applicants, filing a patent application under the PCT simplifies the process and reduces costs, allows delay of prosecution, and provides the applicant with an international search report, a useful indication of the prior art related to the application.
Regarding the advantages for the national patent offices, the draft points out that PCT applications are easier to process, since formalities already have been assessed during the international phase. Additionally, when a PCT application enters the national phase, the corresponding national office has access to valuable reports from international search authorities, which facilitates …
Read MoreKey Decision on Tobacco Packaging Regulation
On July 8, 2016, the World Bank’s International Centre for Settlement of Investment Disputes (ICSID) ruled in favor of Uruguay, ordering Philip Morris International (PMI) to cover Uruguay’s legal fees, in excess of $7 million.
A claim filed by PMI against Uruguay resulted in an ICSID arbitration panel handing over a major victory to the proponents regarding the restriction parameters in the packaging of tobacco products.
The claim was based on the argument that the Uruguayan government had violated a bilateral investment treaty with Switzerland.
The concrete treaty violation was the failure to implement measures such as increasing the size of graphic health warning appearing on cigarette cartons, tax increases, advertising bans, and barring tobacco manufacturers from promoting more than one variety of cigarette brands.
As a result of the claim, Uruguay responded that it acted in good faith, in the interest of promoting public health and in accordance with its international treaties and obligations.
The Tribunal stated that there is no “positive right to use” a trademark and that trademark owners have an exclusive right in order to prevent third parties from using the same mark in the course of trade.
The WTO panel’s decision, which …
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Major Customs operation leads to welfare donation
In 2014 an operation was carried out in which two brothers were found smuggling over 700 pieces of clothing from China with well-known trademarks. The pair was caught by the Uruguayan Custom’s Response and Intelligence Group (GRIA). The pieces of clothing were afterwards resold through different Internet websites to the consumer public, either as original or fake products.
The sellers had a warehouse or deposit, and distribution center in Pocitos, a neighborhood in the Capital City of Montevideo, from where the buyers would pick up the items. When the GRIA officers identified this place, a major operation took place, and over 700 infringing products were confiscated, and the perpetrators faced the criminal legal actions included in the Trademarks Act.
Approximately two years later and after a resolution of the Criminal Court of Uruguay, on July 22, 2016, all the infringing products were donated by the Custom’s Authority to the National Rehabilitation Institute; after the removal of all trademarks, logos and devices from the articles. The National Rehabilitation Institute is the Uruguayan authority in charge of the national prison system, which aims to rehabilitate and reintegrate the prisoners into society through specific work and education programs.
This way, …
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Draft Law to become member of the Patent Cooperation Treaty
On July 28, 2016, the Minister of Industry, Energy and Mining of Uruguay, Carolina Cosse, reported that the government intends to submit a draft law for Uruguay to become a member of the Patent Cooperation Treaty (PCT) to the Parliament shortly.
The announcement took place during an event organized by the Uruguayan PTO (DNPI) to inform about the implementation in the following weeks of an online system for the filing of patents and trademarks.
The draft law to adhere to the PCT has not yet been sent to Parliament.
We will keep you informed about any updates as they arise.…
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Local “Red PI” is organizing 2016 agenda
The Uruguayan Network of Intellectual Property (“Red Uruguaya de Propiedad Intelectual – Red PI”) was established in 2008 with the mission of creating, promoting and using tools and services related to Intellectual Property in order to facilitate the protection and incorporation of value to the local production of goods and services.
Three working groups were created under the Industrial Property Network (Red PI): Group 1, Awareness and training in IP; Group 2, Entrepreneurship; and Group 3, Debate on intellectual property. In February 2016, the first meetings for the three groups took place in order to develop their work plans and schedule of activities for this year.
Group 3, together with the Uruguayan PTO, organized a seminar to discuss the advantages and disadvantages of the Patent Cooperation Treaty (PCT), which took place on March 31, 2016.
Source: http://www.dnpi.gub.uy…
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Resolution to keep patent applications alive
On January 27, 2016, the Uruguayan National Directorate of Industrial Property (DNPI) published Resolution No. 02/2016, which states that applicants of pending patent applications filed before 2010 will receive an Office Action to clarify to the DNPI whether or not they wish to continue with the prosecution of the applications.
The resolution neither clarifies how the notifications to patent applicants will be implemented nor specifies the deadlines for response. Both aspects are still to be defined by the PTO. However, according to the Regulations to the Patent Law, the period of time to respond to an Office Action is 30 days.
Resolution No. 02/2016 is aimed at reducing the current backlog of examinations for patent applications by identifying those patent applications which are still important to their applicants, and then only those will be examined.
Although the resolution does not explain the consequences to applicants not expressing their interest in a patent application within the deadline that DNPI establishes, according to general rules the PTO is entitled to deem said applications abandoned.
Should you require any further information, please contact us. We will follow the implementation of this resolution closely and will keep you updated regarding any further developments …
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Uber in Uruguay
Since the start-up of Uber, a service matching those needing a ride and drivers, Uruguayan taxi owners have started a series of claims and measures to protect their business. Primarily, the conflict is between Single Trade Union of Taxi (in Spanish “Gremial Única del Taxi “) and Uber.
The Union has registered the mark “Uber” before the local PTO (DNPI) before the start-up of Uber in Uruguay. According to local legislation, the trademark owner has the right to use said trademark for a period of 10 years and to file a claim against Uber for trademark infringement. Taxi drivers in Uruguay consider Uber an alternative to public transportation that threats their business.
Uber began business in the country on November 19, 2015, with great success. According to local sources 14,000 users downloaded the App on the first day available.
Representatives from Uber confirmed that they will initiate legal actions because they believe that this is an act of “trademark piracy” because the trademark and the pertinent logo are “well known” to Uruguayan Taxi Union.
Source: http://www.dnpi.gub.uy…
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Drastic patent fee increases planned under draft law
The Uruguayan government recently sent a draft budgetary law for the period of 2015-2020 to the Parliament that includes increases of up to 900 percent for patent fees. This draft law, currently under evaluation, involves also some increases for trademark fees for the National Directorate of Industrial Property (DINAPI).
Article 322 of the draft law contains the proposal for increasing some trademark fees. Other fees remain unchanged (i.e. deed of transfer), while the filing fees are set to increase in the range of approximately 28 to 50 percent.
Article 323 of the draft law contains the proposal regarding patent fees, which involves a drastic increase. The patent application (up to 10 claims) and substantive examination fees would increase 900 percent over the current fees. For each additional claim, it is proposed an increase of 570 percent over current fees, and for annuity fees between 6 to 12 times the current values.
The parliamentary procedure, which started on August 31, 2015, can take between 90 and 120 days, and if the draft law is adopted, the new fees will be applicable from the first day of the following month after the enactment of the law.
We will keep you informed about …
Read MoreUruguayan PTO informs about goals achieved during 2014 in its Annual Report
The Uruguayan PTO (DNPI) has recently launched the Annual Report 2014, which summarizes the main goals achieved by this office during last year.
According to the report, important qualitative and quantitative changes both regarding processes and IT systems as well as technological infrastructure and human resources, were consolidated in 2014.
Regarding internal management improvements, the DNPI highlights that the enhancement of the online services allowed an increase of 37% of online patent and trademark applications during 2014 compared to 2013. Additionally, the inclusion of the digital signature in all official documents issued by DNPI, the progress in the digitalization of the patent and trademark archive (already digitalized in a 78.5%) and the recently launched e-notification system are some of the developments mentioned in the report.
Concerning trademarks, the DNPI received 9,977 filings during 2014, a 5.8 increase over 2013,and 37.8% of which were local filings. Of those cited, 5,836 filings correspond to primary registrations and the rest to renewals. The number of trademark grants during 2014 was 10,603, 56.4% of which were primary registrations and 43.6% renewals. After Uruguay, the U.S. was the country that filed more trademarks with the DNPI, followed by other countries including Argentina, Switzerland, Germany, France …
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