PATENTS – NEW PILOT PROCEDURE FOR USE OF EXAMINATION RESULTS (PAR)

Of interest to Applicants with Patent Applications filed in Uruguay prior to January 2017.

As from September 1, 2019, the Uruguayan Patent Office will implement the Pilot Procedure for Use of Examination Results (PAR).

We are pleased to announce that on August 14, 2019, the Uruguayan Patent Office has resolved to launch a new project in order to optimize the procedures for examining applications of patents of invention and utility models.

This new program, “Procedimiento Piloto para Aprovechamiento de Resultados (PAR)”, will enter into force as from September 1st, 2019 and establishes that for Patent Applications filed before January 1st, 2017, the international search and the substantive examination will be deemed as complied with through use of the examination reports issued by other Patent Offices.

For the purposes of applying the PAR, the following requirements must be met:

I. The application must have been filed before January 1, 2017 and must be still pending examination.

II. The application must have been published by MIEM-DNPI (Uruguayan Patent Office).

III.  The substantial examination fees have been paid.

IV.  That there is no examination report issued by MIEM-DNPI.

V.  A Power of Attorney must be filed in accordance with the requirements of Circular 10/2015.

VI. That there is a patent granted by another Patent Office, on the same invention or utility model.

To apply for the PAR, the interested party must file a request that must indicate:

     –  Identification of the application in which the PAR is intended.

– Granting Resolution of the patent and copy of the search and examination reports issued by the Patent Office, providing all the data that help its identification by the Examiner.

–  Copy of the set of claims on which the patent was granted.

In all cases, if the documentation is filed in a foreign language, the same must be translated in Uruguay by a Sworn Uruguayan Public Translator.

If the set of claims of the granted patent differs from the one filed before MIEM-DNPI at the time of filing the request for applying to the PAR, the Applicant must adjust the latter as long as this adequacy does not imply a broadening of the subject matter of the patent.

If there are objections on these requirements, an Office Action will be issued for a period of 30 days for the purpose of rectification. Extensions will not be conferred on this Office Action. Failure to comply with the Office Action will entail rejection of the request for PAR, returning the Application to the general procedure.

The Examiner will then determine, within a maximum period of 60 days, if the Application and the set of claims submitted for the purposes of the PAR comply with the requirements of Articles 9, 13, 14 and 15 of Patent Law 17.164. If there are objections, an Office Action will be issued for a period of 30 days, extendible only once by request of the Applicant, for an additional 15 days.

Our Patent Team at FISCHER Abogados will be glad to provide you with any further information and clarification or assistance you may require.