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DERECHOS DE PROPIEDAD INTELECTUAL
NATIONAL LEGISLATION - URUGUAY
Law No. 17.164
ARTICLE 99- The patentee shall be entitled to file the corresponding actions against the one who violates the rights arising from the patent and shall also be entitled to claim for the recovery of damages on account of those actions performed between the patent application and the granting thereof.
The recovery of damages on account of those prejudicial actions performed as from the filing of the application may also be claimed in the event that the offender obtains knowledge of the patent contents, by any means, prior to the corresponding publication, taking into account the date when the exploitation stars.
When the right belongs to several patentees any of them may file the corresponding actions.
ARTICLE 100- Those persons commercializing or distributing products in infraction shall only be responsible for the resulting damages when there are certain and conclusive evidences that said persons were in conditions of knowing the infraction.
ARTICLE 101- In civil suits, when the object of a patent is a process to obtain a product, the judicial authorities shall have the power to order the defendant to prove that the process to obtain the product is different from the patented process, providing said product is new.
ARTICLE 102- In the event of infringement the licensee with registered license shall be entitled to file or perform the necessary legal actions or administrative measures to defend the rights deriving from the patent.
ARTICLE 103- The judicial authority has the power to adopt, ex-officio or at the request of the interested party, provisional or security measures according to the provisions of Title II of the General Code of Court Proceedings.
ARTICLE 104- The civil action for damages shall prescribe within the term of four years as from the date when the patentee get to know the infraction.
ARTICLE 105- When the applicant for the registration of a patent pretends to be the owner thereof to the prejudice of the real inventor or designer, the latter is entitled to apply for the transfer of said patent to him/her.
A co-inventor a co-designer or other co-holder of the patent right shall also be entitled to apply for said transfer regarding those rights corresponding to him/her.
The action for damages and the application for the transfer to the patentee shall prescribe in the term of five years as from the patent was granted or two years as from the patent started to be exploited in the country, whichever period expires first.
ARTICLE 106- Those violating any of the rights protected by invention patents, utility models or industrial designs shall be punished with six months in prison to three years under penitentiary arrest.
In any case, those objects manufactured in infraction and those tools predominantly used for the manufacturing shall be confiscated and destination thereof shall be decided in consultation with the Industrial Property Office.
ARTICLE 107- The penalty shall consist in fifteen months in prison to four years under penitentiary arrest whenever the following aggravating circumstances have occurred:
To have been a dependant from the patentee or the licensee.
To have obtained the knowledge on the special manners to perform the patented object from the patentee or the licensee.
ARTICLE 108- Patent registers are public and can be consulted by any interested party in the manners to be established by the regulations hereof.
ARTICLE 109- The patent application shall be kept in secret until its publication.Those applications dismissed or abandoned before the corresponding publication shall be also kept in secret.
ARTICLE 110- The Industrial Property Office shall kept the register of the actions and contracts regarding the commercial or industrial exploitation of patents and the register of the actions or contracts modifying, affecting or limiting the rights derived from said patents.
Particularly, the following registers shall be kept:
Conventional licenses, license offers, compulsory licenses and other uses without the authorization of the patentee and further ones provided in Chapter V of Title II hereof as well as the corresponding modifications.
Seizures, prohibitions to innovate and further actions affecting the use or disposition of the patent rights.
Pledges and further rights limiting or being constituted on the patent rights.
ARTICLE 111- Let the register of contracts made with the object of technology transfer, research and development, franchise agreements and similar ones be hereby created. Said contracts shall be in force against third parties as from the corresponding registration.
ARTICLE 112- Once the resolution granting the patent registration has been issued the corresponding fee shall be paid within the term of sixty days as from the notification of the resolution. The non-payment of said fee in due time and manner shall be deemed as the abandon of the application.
Annuities shall be paid for the maintenance of the patent rights. Said annuities shall be paid within the term of sixty days before each year is due.
Said term may be extended by six months as from the due date, subject to the payment of a 50% (fifty per cent) surcharge.
Failure to pay any of the annuities shall entail forfeiture of the patent.
ARTICLE 113- Those applications and further actions provided for herein shall pay those fees, prices or rights to be established in article 117 hereof. Regulations hereof may establish exonerations, discounts and payment systems in the following situations:
Cooperation agreements subscribed by the Industrial Property Office and other educational, development or research institutions or agencies.
Offerings of agreements or licenses to exploit the patent in the country.
In the event of inventors with short funds.
ARTICLE 114- Failure to pay the corresponding fees in due time and manner shall entail the filing of the actions.
ARTICLE 115- The Executive Power may grant a period of grace of six months for the payment of the fees for the maintenance of the industrial property rights. Said extensions shall be subject to the payment of the corresponding surcharges.
In the same manner, the restoration of those patents which have lapsed by reason of non-payment of fees may be provided.
In no case said restoration shall affect those rights lawfully and previously acquired by third parties.
ARTICLE 116- Those incomes generated through the execution of this Law shall be applied to the improvement of the service notwithstanding the provisions of paragraphs A), B) and C) of article 305 of Law N° 16.736 dated January 5, 1996, modifying article 290 of Law N° 16.170 dated December 28, 1990 and article 63 of Law N° 16.462 dated January 11, 1994.
ARTICLE 117- The Industrial Property Office shall collect fees for the following proceedings:
ARTICLE 118- Those terms granted hereunder to third interested parties shall consist in days running and shall be strict time limits. They shall be deemed to start the day following the notification of the corresponding action.
Publication in the Official Gazette of the Industrial Property Office shall be deemed as enough notification regarding those actions comprised in the matter governed by this Law. The fees to be collected for said publications shall be fixed by the regulations hereof.
ARTICLE 119- The regulation hereof shall fix those terms granted to answer the proceedings’ actions and other terms non provided for hereunder.
ARTICLE 120- Those employees of the Industrial Property Office acting in the proceedings of the applications for the rights governed hereunder shall respect the confidentiality of this information. Violation of the same shall be deemed as serious offence.
ARTICLE 121- Those persons working for the Industrial Property Office who take part in the proceedings of the rights granted hereunder shall not take part in said proceedings on their own interest or representing third parties, neither directly nor indirectly, until the term of two years as from the date when the labor relation ceased.
The nonfulfilment of the precedent disposition will be causal of:
Dismissal, if the person is a civil servant.
Contract cancellation, if the person signed a labor contract with the Industrial Property Office.
Fine, in the event that the person intervenes before the above mentioned term is due.
The amount of the fines shall vary from 10 to 100 UR (ten to one hundred monthly readjusted monetary units) according to the seriousness of the infringement.
ARTICLE 122- The Industrial Property Office is the competent authority in all matters provided for herein. Unless otherwise provided, it has the required powers and authority to take resolutions and issue regulations as well as to order and develop those proceedings required for the fulfillment of its duties.
ARTICLE 123- Those applications for patents under prosecution at the enforcement of this Law shall continue the corresponding proceedings under the provisions of the former legislation. Those patents applied for as from the enforcement of this Law shall be governed by the provisions hereof.
ARTICLE 124- Those patents already in force at the enforcement of this Law shall be governed by the previous legislation with the following exceptions:
Total or partial waiver.
Licenses and other uses without the authorization of the patentee.
Payment of rights, fines, surcharges, interests or annuities during the remaining term.
Grace period for rights restoration on account of non-payment of annuities.
Registration of actions and contracts regarding patents.
Administrative or judicial actions when filed after the enforcement of the present Law.
Rights of several patentees and proceeding to solve their differences.
Term of validity of invention patents which shall be extended to twenty years as from the filing date of the application.
ARTICLE 125- The substances, matters or products obtained by chemical means or processes as well as the food substances, matters and products, the chemical and pharmaceutical substances , matters or products and the medicines of any kind may obtain the patent protection provided for herein providing the first patent application has been filed with any member country of the World Trade Organization as from January 1st, 1995 and said products have not been commercialized in the country or abroad and no formal and effective preparations have been made by third parties -by the grant date of the patent- for the exploitation of the object of the corresponding patent in the country and providing said patent has been applied for before the Industrial Property Office as from January 1st, 1995.
ARTICLE 126- Let the application of the burden of the proof provided for in article 101 hereunder be hereby postponed until January 1st, 2000.
ARTICLE 127- The inventions of pharmaceutical and chemical-agricultural products shall not be patentable until November 1st, 2001.
Notwithstanding the above, invention patents for the mentioned products may be applied for according to the provisions and requirements hereof and the grant of said patents shall be postponed until the date established in the previous paragraph.
When invention patents for pharmaceutical and chemical-agricultural products claim the right of priority provided for in article 4th of the Paris Convention for the Protection of the Industrial Property, in no case the first filing date may be prior to January 1st, 1994.
ARTICLE 128- This Law shall enter into force one hundred and twenty days after its publication. Let Law N° 10.089, dated December 12, 1941 and Decree-law N° 14.549, dated July 29, 1976 be derogated upon the entry into force of this Law.
Sala de Sesiones de la Cámara
MINISTERIO DE INDUSTRIA,
ENERGIA Y MINERIA
acúsese, recibo, comuníquese, publíquese
SANGUINETTI - JULIO HERRERA
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