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DERECHOS DE PROPIEDAD INTELECTUAL
NATIONAL LEGISLATION - URUGUAY
Law No. 17.164
ARTICLE 54- Any interested party shall be entitled to apply for a compulsory license before the term of three years as from the patent grant or four years as from the application date, whichever term expires last, on the grounds of failure to work or failure to carry out effective and formal preparations thereto or when the working has been interrupted for more than one year, providing no force majeure circumstances have occurred.
Besides the force majeure circumstances recognized by law those objective and unavoidable difficulties of technical and legal character such as delays in public entities to issue authorizations, which are beyond the patentee control and hinder the working, are also deemed force majeure circumstances.
Working of patents comprises use, importation and any other commercial activity carried out as regards the object thereof.
To the corresponding effects the working of a patent carried out by a representative or licensee shall be deemed as carried out by the patentee.
ARTICLE 55- In particular situations which may affect public utility, national defense or security and economic, social and technological development of certain strategic sectors of the country as well as in cases of public health emergency and other similar circumstances of public interest, the Executive Power shall grant compulsory licenses or other uses by express resolution and without the authorization of the patentee. The extent and duration of said compulsory licenses or other uses shall be suitable and proper to the ends they were granted for.
ARTICLE 56- The right of the patentee may be limited according to the provisions of the previous article upon lack of or insufficient commercial supply to cover the internal market needs.
ARTICLE 57- In the event of the grant of compulsory licenses or other uses without the authorization of the patentee the corresponding notification of the application for a license or other use shall be sent to the patentee and to the patent licensee for the strict time limit of thirty days. Upon expiration of the mentioned term, if no express opposition is filed, the application shall be deemed to have been accepted.
ARTICLE 58- Any resolution granting a compulsory license or other use according to the above article shall provide for the permanent or provisional extent thereof and for the remaining aspects prescribed for compulsory licenses.
ARTICLE 59- Authorization to said uses may be denied for the safeguard of the suitable protection due to the legitimate interest of the persons to whom said authorization was granted providing the circumstances giving rise to said authorization have disappeared and they are not likely to reappear. Competent authorities shall be authorized to examine, upon duly founded application, if the corresponding circumstances still exist. .
ARTICLE 60- The Industrial Property Office shall grant, by express resolution, compulsory licenses regarding patents whenever the competent authority, through an administrative or judicial process granting the patentee the corresponding right to legal defense and further guarantees, has determine that said patentee have incurred in unfair competition, abuse of the rights granted by the patent or his/her dominant position in the market.
ARTICLE 61- The situations provided for in the previous article include the following:
The fixing of prices comparatively in excess regarding the international mean market price of the patented product.
The existence of offers to supply the market at significantly minor prices than the ones offered by the patentee.
Refusal to supply the market suitably and regularly with the raw material or patented product, in reasonable marketing conditions.
Hindrance or prejudice affecting commercial or productive activities in the country.
Those acts limiting commerce in an unjustified manner or being prejudicial to technology transfer
ARTICLE 62- After more than two years as from the grant of the first compulsory license or other uses on the grounds of unfair competition or abuse of the rights granted by the patent, if the patentee persists in the actions or practices which gave rise to the compulsory license or other uses, the right of the patentee as such may be revoked ex-officio at the request of the interested party, after granting the patentee a strict time limit of thirty days to contest the action.
ARTICLE 63- Revocation of the patent or the license shall not affect those actions or contracts made for the exploitation of the patent during their corresponding term of validity neither shall it hindrance the commercialization of the corresponding products.
ARTICLE 64- Any interested party shall be entitled to obtain a compulsory license or other use without the authorization of the patentee when said interested party has required the patentee to celebrate a license agreement and was not able to celebrate said agreement in reasonable commercial conditions suitable for the country within the term of ninety days as from the corresponding requirement. In any of the above mentioned situations the Industrial Property Office shall grant the compulsory license or other uses without the authorization of the patentee once the interested party proves the following:
That said interested party has the technical expertise and the economic means to carry out the corresponding working. The technical expertise shall be evaluated by the competent authority, according to the specific provisions in force in the country regarding each field of the activity. By economic means it is meant the possibility of meeting those obligations arising from the working to be carried out.
That said interested party has an entrepreneurial infrastructure allowing he/she to contribute to the development of the market of the product object of the license at a domestic level.
When the patent was granted for a raw material from which a final product is to be developed, that the said interested party is able to carry out said development by him/herself or through third parties within the country, except in those cases when production is not possible within the national territory.
When the technological sectors involved were not under protection by the entry into force of this law and the patent comprises raw material from which a final product is to be developed, the licensee shall covenant and agree to acquire said raw material, molecule or principle from the patentee or from the person indicated by the patentee, at the prices offered by the same in the international market, and the patentee shall covenant and agree to sell them in the suitable time and manner. Should there exist and special price for the patentee subsidiaries, said raw material, molecule or principle shall be offered to the licensee at said price.
The licensee shall be entitled to acquire the raw material from another supplier providing said supplier offers it at an at least 15% (fifteen per cent) minor price as regards the price offered by the patentee in the national territory. If this is the case, the licensee shall prove that the raw material acquired in this manner has been lawfully commercialized, within the country or abroad, by the patentee, by a third party with the patentee consent or by a lawfully qualified third party.
ARTICLE 65- To fix the remuneration provided for in the previous article the provisions of paragraph B), article 77 hereof shall be applicable.
ARTICLE 66- Compulsory licenses or other uses without the authorization of the patentee shall only be in force regarding all working or commercialization actions in connection with the object of the license during all the term of validity of the patent within the territory of the country and regarding any application thereof.
ARTICLE 67- Once a compulsory license is granted the patentee undertakes the obligation of providing all the required information for the exploitation of the object of the license such as technical knowledge, manufacturing documentation and analysis and verification techniques as well as to authorize the use of the patents relative to those components or manufacturing processes in connection with the patent which is the object of the license.
Groundless denial from the patentee to provide the technical knowledge and transfer the required technology to achieve the pursued aim or non-selling in the suitable time and manner of the raw material when the latter is the object of the patent shall entail the immediate loss of the corresponding royalties on the part of the patentee.
ARTICLE 68- The patent shall forfeit if after the term of two years as from the grant of the first compulsory license or other uses without the authorization of the patentee the object of the license cannot be exploited on the part of the compulsory licensee by reasons imputable to the patentee or his/her contractual licensee.
By "reasons imputable to the patentee" it is meant, amongst other things, denial to provide information or the authorization provided for in the previous article.
ARTICLE 69- Whenever the patented invention or utility model cannot be exploited in the country without violating a previous patent, the patentee or a licensee to any title thereof shall be entitled to apply for the grant of a compulsory license regarding the other dependent patent as long as it is necessary to exploit the same and avoid violation thereof.
When the object of one of the patents is a product and the other's is a process both patents are deemed to be dependent from each other for the corresponding exploitation.
ARTICLE 70- The license or use without the authorization of the patentee whose aim is to allow the exploitation of a dependent patent shall be granted in the following conditions:
The invention claimed in the second patent shall entail a significant technological advance with a considerable economic importance regarding the invention claimed in the first patent.
The patentee of the first patent shall be entitled to obtain a cross-license under reasonable conditions to exploit the invention claimed in the second patent.
Assignment of the authorized use of the first patent shall include assignment of the authorized use of the second patent.
ARTICLE 71- The interested party wanting to obtain a compulsory license or other uses shall certify that he/she has required the patentee to celebrate a license agreement and was not able to celebrate said agreement in reasonable commercial conditions suitable for the country within the term of ninety days as from the corresponding requirement.
This requirement shall not be compulsory in the event of national emergency or utmost urgency and in the event of non-commercial public use and unfair competition.
ARTICLE 72- The interested party wanting to obtain a compulsory license or other use without the authorization of the patentee shall have the technical expertise and the economic means as well as the entrepreneurial infrastructure allowing he/she to carry out the corresponding working.
ARTICLE 73- A compulsory license or other use without the authorization of the patentee shall not:
be granted with exclusive character,
be the object of a license,
be granted to the defaulter,
be assigned, except together with the company or such part thereof carrying out the exploitation of the object of the license.
ARTICLE 74- The patentee shall be granted a strict time limit of thirty days to answer the application for the compulsory license. Once this term is due, if no express opposition has been filed, the application shall be deemed as duly accepted by said patentee.
If an opposition is filed an Arbitration Board with full powers shall be appointed within the term of forty days. Said Board shall be made up of three arbitrators, one of them to be appointed by the patentee, the other by the applicant for the license and the third one by both parties, in common agreement. If any of the parties fails to appoint the corresponding member or if the parties do not come to an agreement regarding the appointment of the third member, the Industrial Property Office shall appoint the third member within the term of ten days.
The Arbitration Board shall take a resolution as regards the denial or the granting of the said compulsory license as well as the extent, conditions and remuneration thereof, within a term not exceeding sixty days as from the appointment date.
ARTICLE 75- Within the term of the following thirty days, the Industrial Property Office shall take a well-founded resolution regarding the grant of the compulsory license in the conditions applied for by the applicant, the ones directly agreed by the parties, the ones arising from the arbitration or the ones considered by said Industrial Property Office in the event of the non-existence of the Arbitration Board resolution.
ARTICLE 76- The proceeding provided for in articles 74 and 75 hereof shall not govern those situations provided for in Paragraphs I and III of Section III of this Chapter.
ARTICLE 77- The resolution granting the license shall be issued regarding the following aspects:
The extent of the license, particularly specifying those actions excluded from the same.
The payment of the suitable remuneration by the licensee. The same shall be determined based on the extent and economic value of the exploitation of the invention object of the license, taking into account the royalty average for the corresponding sector in commercial license agreements between independent parts and further circumstances proper to each case.
The rights and obligations of each party thereto.
Those measures taken for the provision by the patentee of the industrial or commercial information required for the corresponding exploitation as well as the guarantees for the corresponding care and confidentiality on the part of the licensee.
The term fixed to start the exploitation of the object and the term within which the failure to work shall entail the license revocation.
Other necessary and advisable aspects for the patent exploitation and the license commercialization, fulfillment and control.
ARTICLE 78- The granted compulsory license can be modified through the proceeding established for the granting thereof when the patentee grants licenses in more advantageous conditions.
ARTICLE 79- The compulsory license and other uses without the authorization of the patentee can be revoked upon any of the following situations:
Failure to work by the licensee, once the term to start the exploitation and the term within which failure to work entails the license revocation, both fixed by the resolution granting the license, are due (paragraph E of article 77 hereof).
Unfair competition or abuse of the granted rights by the licensee.
Non-fulfillment of the terms governing the grant.
ARTICLE 80- The resolution granting a compulsory license or other uses without the authorization of the patentee shall be published and registered in the special register kept therefor.
ARTICLE 81- All new disposition or conformation obtained or introduced in tools, work instruments, utensils, devises, equipments or other already known objects entailing an improvement in their use or in the result of their function are deemed patentable utility models.
A utility model shall be deemed novel when it is not within the state of the art.
A utility model shall be deemed patentable if it implies at least a minimum inventive activity.
ARTICLE 82- The application for a utility model shall refer to only one object, although it may comprise two or more parts working as a unitary set. Several elements or aspects of said object may be claimed in the same application.
ARTICLE 83- The following shall not be protected through an application for a utility model patent:
Those changes in the shape, size, proportions or material of an object, unless said changes modify the object qualities or functions.
The mere substitution of elements by other elements already known as equivalent.
The matter excluded from protection by invention patent under to the provisions hereof.
ARTICLE 84- Utility model patents shall be granted for the term of ten years as from the filing date of the application thereof.
Utility models' term of protection may be extended once by the term of five years.
Applications for said extensions shall be filed within one hundred and eighty days prior to the expiration of the term of protection. Said applications may be also filed within one hundred and eighty days following the expiration of the term of protection, subject to the payment of a 50% (fifty per cent) surcharge on the corresponding fees (article 117 hereof).
ARTICLE 85- Notwithstanding the provisions of this Title, utility models shall be governed by the provisions governing invention patents, when applicable.
ARTICLE 86- Any original creation with ornamental character that once incorporated or applied to an industrial or handcrafted product gives said product an special appearance is deemed a patentable industrial design.
Said ornamental character may derive from aspects such as the line, the outline, the configuration, the color, the texture or the material.
ARTICLE 87- The protection granted to an industrial design under the provisions hereof does not exclude or affect the protection due to the same design on account of other intellectual property systems.
ARTICLE 88- The patentee of an industrial design has the right to prevent third persons from manufacturing, selling, offering on sale, using, importing or storing without his/her authorization and with commercial aims any product with a design reproducing, being similar to or including his/her design or presenting slight differences with it.
The performance of some of the actions provided for in the previous article can also be impeded when the design reproduced or incorporated is applied to a type of fabric or product different from the ones specified in the patent.
ARTICLE 89- The following shall not be the object of an industrial design patent:
Those designs which have been the object of an application in the country with a prior filing date or priority date, providing they are published, and those whose contents have been disclosed or made available to the public, in any place, through publication, description, exploitation, commercialization, use or any other means, before the filing date or the priority date.
Those designs lacking original shape or aspect and presenting minor differences regarding the previous models or designs.
Those designs whose shape purpose is to achieve a technical effect or to meet requirements of technical character related to the function to be performed by the product.
Those designs lacking a specifically defined shape.
Those designs consisting only in a change in the color of already known designs.
Those designs entailing the performance of a work of art.
Those designs contrary to public order and socially accepted manners.
ARTICLE 90- Novelty shall not be affected by the disclosure of the invention made within the term of six months before the filing date of the application or the invoked priority, providing said disclosure comes directly or indirectly from actions performed by the inventor, his/her heirs or third parties.
ARTICLE 91- The application for the registration of an industrial design shall refer to only one object, although several elements, aspects or variations of the same may be claimed providing they have the same main distinctive characteristics.
ARTICLE 92- The application for a design shall be made under the provisions of article 22 hereof with the following modifications:
The specifications and the claims shall not be filed if said requirement is not suitable to the design nature.
A graphic or photographic representation of the design shall be included to allow for the clear, complete and accurate knowledge of the same.
The minimum requirements provided for in article 23 hereof shall consist in the applicant identification and the graphic or photographic representation of the design.
ARTICLE 93- The application shall be examined to verify the fulfillment of the formal requirements provided for in the previous article.
ARTICLE 94- Once all due formalities and steps are duly complied with the application for a design patent shall be published in the Industrial Property Gazette after the term of two months as from the day following the filing date or the day following the priority date, as appropriate.
The publication may be done earlier, at the request of the applicant.
ARTICLE 95- Oppositions may be filed by any interested party or ex-officio, on the grounds of the non-fulfillment of the conditions and requirements for the grant of the protection. Said oppositions shall be filed within a strict time limit to be fixed by the regulations hereof. Said term shall be deemed to start as from the publication date. The filing of oppositions shall not grant to the party filing them the character of party to said proceedings.
ARTICLE 96- In the event of no opposition being filed or if the filed opposition have been dismissed and once all the formal requirements provided hereof are duly complied with the applied design patent shall be granted and the corresponding certificate shall be issued.
ARTICLE 97- The term of validity of the industrial design patent shall be of ten years as form the application filing date.
The patented industrial design may be extended only once by the term of five years. The application for the extension shall be filed within the term of one hundred and eighty days before the expiration of term of validity or after said expiration, by the payment of the corresponding surcharge.
ARTICLE 98- Notwithstanding the provisions of this Title, industrial designs shall be governed by the provisions governing invention patents, when applicable.
Continue on with TITLE V - Actions and Penalties for the Infringement of Patents
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