Legal Alert – URUGUAY
PATENTS OF INVENTION. NEW RESOLUTION ISSUED BY URUGUAYAN PTO TO URGE PROSECUTION OF PATENT APPLICATIONS. RESOLUTION Nº 04/2021.
- The Uruguayan PTO has issued a Resolution – Nº 04/2021 – with the aim of urging prosecution of pending patent applications and continuing to reduce the existing backlog.
- As per the Resolution, the Uruguayan PTO will issue Office Actions in the files of the patent applications which were filed in years 2013 and 2014, which have not yet completed substantial examination, in order that the Applicants confirm if they continue to be interested in prosecution of the respective applications.
Office Actions will therefore be issued for each of the pending applications and will be notified to the Applicants.
While no sanction is foreseen in the Resolution for failure to respond the Office Action, due not must be taken to the fact that in case of lack of response, as per current patent rules and regulations, the Uruguayan PTO is entitled to consider an application as abandoned.
In accordance with article 37 of the Implementing Regulation of Patent Law No. 11/000, the time period for which Office Actions are granted in regard to procedures regulated by the patent law shall be of 30 (thirty) days. Notwithstanding the foregoing, the Resolution does not define a time limit.
- The resolution is grounded on the need to reduce the considerable delay experienced by the Uruguayan PTO in the Examination of Pending Patent Registration Applications, being able to identify applications for which the Applicant has lost interest.
- While the Resolution does not clarify the effect in the event that the applicant does not express his interest within the time limit to be granted by the PTO (or states that he has lost interest in his application for registration), in accordance with the application of the general principles and rules, the Office shall be entitled to resolve the file, declaring the patent application as abandoned, in accordance with article 39 of the above-mentioned Implementing Regulation. Therefore, it is of due diligence to duly respond the Office Action and expressly confirm Applicant´s interest in prosecution of the application.
Our Patent Department will be notifying our clients of any Office Actions which may be issued in regard to their pending cases corresponding to years 2013 and 2014. We will also be glad to provide with any further information or clarification.