1 June 2012CopyrightJuan Lapenne

Business brief 2012: Uruguay

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

Patent applications are prosecuted at the National Office of Intellectual Property, which is a department of the Ministry of Industry, Energy and Mining. Only regular or convention patent filings are acceptable in Uruguay. Uruguay is not a member to the Patent Cooperation Treaty (PCT).

What are the costs of obtaining and defending a patent?

The costs involved in filing and prosecuting a patent application until grant, in the average case, amount to approximately US $3,700. This estimate refers to a patent of invention containing up to 10 claims. Additional official fees are payable for filing, examination and grant, depending on the amount of claims involved.

Where can you find information on existing patents in your jurisdiction?

Information on existing and published patents must be requested at the patent office. There is some information available at the patent office site (www.dnpi.gub.uy), but it is not comprehensive.

Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?

All information related to the invention sought for protection must be included at the moment of filing the application in Uruguay (within the specification). This includes assays, experimental data and any other information that may be required as technical support. At present, the patent office examiners are quite reluctant to accept the filing of assay results, etc, at a later stage.

In Uruguay, therapeutic and diagnosis methods as well as ‘uses’ are barred from patentability. In the past, we were able to obtain patents including Swiss-style claims, but lately the examiners tend to reject such claims. In some instances it can be defended but the tendency in recent years has been to reject Swiss-style claims.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

Trademarks rights are secured by filing and obtaining a registration before the Uruguayan Trademark Office. The procedure is quite simple, but the Uruguayan Trademark Office has a backlog and is taking approximately two years to grant a mark that has not confronted any conflict.

When the trademark is granted it will be valid for 10 years, and is renewable indefinitely for identical periods of time. Once the trademark owner obtains registration, administrative or judicial actions can be filed against any company or particular that intends to register or use a mark that is identical, or similar, to the registration and covers the same, or related, goods/services.

Notorious and well-known trademarks have a broader protection.

What are the costs for registering and defending a trademark?

The cost for filing a trademark application in one class for a word mark may vary from approximately US $705 to US $850. The cost of defending a trademark depends on the nature of the infringement against such trademark.

What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?

The most common threats for trademark owners are any kind of infringement (counterfeiting, lookalikes, trade dress imitations, etc) that have impact on the trademarks image or on the sales.

Judicial actions—both civil and criminal—can be initiated against infringers in order to stop the infringement action and remove (in some cases even destroy) the infringing products from the market.

What are the most common mistakes trademark owners make?

The most common mistake of trademark owners is to start using a mark without filing a trademark registration in our country.

If they already own a registration, the most common mistake is not having a skilful IP representative that has a solid market vigilance in order to advise them of any possible infringements.

Copyright

How should people ensure they are protected against copyright infringement?

To ensure copyright protection the author should always place his name in the work in the usual manner. If he does so, he will be considered the author of the work and will be able to file infringement claims against copyright infringements.

Furthermore, it is advisable to register the copyrighted work within the Uruguayan National Library, even though the registration of a work is not compulsory in our jurisdiction for it to receive copyright protection. The benefits of registering a copyrighted work within the National Library is to have evidence as of the date of creation of the infringed work, and evidence of authorship.

What is the best way to deal with infringement, and what are the costs associated with it?

A copyright owner who has reason to believe the importation of copyright-infringing material is being prepared, has the faculty to lodge an application before the correspondent court requesting customs to suspend the release into free circulation of the suspected goods. In such cases the court shall issue a decision within 24 hours of the application.

If the application is granted and if the suspected material is provisionally seized, the copyright owner will have the burden of filing a substantive civil and/or criminal claim within 10 days as of the issuance of the decision granting the seizure of the suspected goods. The costs associated with this course of action are related to the economical value of the case, so they will depend on the amount of goods and their estimated value.

This course of action is a valuable tool for preventing at customs level the dissemination of infringing goods within the Uruguayan jurisdiction.

Common copyright infringement claims will be prosecuted as normal civil actions and will take from one to three years, if the case is not settled beforehand. Both professional and official fees are related to the monetary/economical value of the case.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Unfortunately counterfeiting in Uruguay is a big problem which has increased in recent years.

The following are the main issues regarding counterfeits in Uruguay: health problems, (because of fake pharmaceuticals), economic problems (because of the damage to the wider economy) and, in the case of trademarks, problems affecting their reputation.

What industries are particularly at threat?

The main Uruguayan sector that is suffering from counterfeits is the music industry. It is quite difficult for musicians to record a CD as the costs are high, and then the sales are not as good as they expected due to the fact that consumers can buy pirated discs at incredibly low prices.

Other industries under threat are automotive, medicine and clothing. These industries are suffering not only economically from counterfeiting but also experiencing reputational damage.

What are the best strategies for dealing with the problem?

The best strategies for dealing with counterfeits are the following:

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