Dear Clients and Colleagues,
Please be informed that, on today's date, the Uruguayan Trademark Office issued a resolution No. 6/2019, stating a Pilot Procedure for the Use of Results (PAR) regarding the examination of patents of invention and utility models.
Under the aforementioned Pilot Program, the international search and the substantive examination will be considered fulfilled through the use of examinations carried out in other Patent Offices provided that the following conditions are met:
a) That the application has been filed before January 1, 2017 and is still pending of examination. b) That the application has been published by the Patent Office.
e) That the substantive examination fee has been paid
d) That there is no examination report carried out by the Patent Office
e) Submit an Authorization of Agent
f) That there is a patent granted by another national or regional Patent Office, on the same invention or utility model. To take advantage of the PAR, the interested party must submit a written request indicating:
. Identification of the file in which the application of the PAR is intended.
. Resolution of allowance of the patent in the National or Regional Office and a copy of the search and examination reports made by it, providing all the data that facilitates its individualization by the examiner.
. Copy of the set of claims on the basis of which the patent was granted.
In all cases, if the documentation is filed in a foreign language, its translation by a public translator must be submitted.
If the set of claims on the basis of which the patent had been granted differs from the one filed before the Uruguayan Patent Office, at the time of submitting the request for the PAR, the applicant must adjust the latter in order to have the same scope as the first, on the basis that said adequacy does not imply an extension of the object of the patent.
Once a PAR application has been submitted, the Patents area will assign the file to an examiner in the respective area, who will monitor compliance with the requirements of this Resolution.
If there are observations on these requirements, the applicant will be given a non-extendable 30 (thirty) days term for the purpose of rectification.
Failure to comply with the above request, the request for the PAR will be rejected, returning the patent application to the general procedure.
Once compliance with the aforementioned formal requirements has been verified, said circumstance will be indicated in the file.
The Examiner will then determine, within a maximum period of 60 (sixty) days, if the application and the claims filed for the purposes of the PAR do not violate the provisions of articles 9, 13, 14 and 15 of Law No. 17.164.
In the case of the provisions of article 9, the examiner must assess compliance with national background.
If there are no objections, the Examiner will issue a final report and the dossier will be then submitted to the Direction of the Patent Office for the purpose of issuing a Resolution on the matter.
If there are objections, a the applicant will be given a 30 (thirty) days term, extendable for a single period of 15 (fifteen) days, upon express request of the applicant. After the deadline or once the applicant has submitted a reply, the Examiner will submit a final report to the Patent Office's Director for consideration, indicating if the objections were rectified by the applicant.
The Patent Office could unapply the PAR in those situations in which technical-legal considerations or other well- founded reasons so indicate.
The above mentioned resolution will be applicable since September 1, 2019. We remain at your disposal in case any additional information is required.