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Uruguay launches new Patent Prosecution Highway program

To optimize and expedite the examination procedures for patents and utility models, the Uruguayan Patent and trademark Office (DNPI) has decided to take advantage of the results of the work carried out in other IP Offices to avoid duplication of efforts.

Thus, as of October 1, 2021, this Office will adopt a new fast-track examination procedure for patents and utility models.

For the purposes of the application of the PPR, the following requirements must be met:

a) The application is pending examination.

b) The application has been published in Uruguay.

c) The substantive examination fee has been paid.

d) The applicant has not been notified of the examination report.

e) A patent has been granted by another national or regional Patent Office on the same invention or utility model.

To apply for the PRP procedure, the following must be added:

a) Copy of granting the patent in the Foreign Office and copy of the search and examination reports carried out by the same, providing all the data that facilitate its individualization by the Examiner.

b) Copy of the claim set based on which the Foreign Office granted the patent.

It is important to emphasize that a local public translator must translate into Spanish all documentation in languages other than Spanish.

In case the claim set based on which the patent was granted differs from the one filed before DNPI Uruguay when filing the application for protection with the PAR, the applicant must adjust the latter to have the same scope as the former, provided that this adjustment does not imply an extension of the patent subject matter.

The establishment and fulfillment of the requirements in the PPR lead the Examiner to examine the patent within 60 days.

If there are no observations, the Examiner will make a final report, and the background will be submitted to the Directorate to issue a Ruling on the merits of the case. If there are observations, the Examiner will confer the appropriate responses stated in the patent regulations in force.