Enlargement of Patent Prosecution Highway in Uruguay

  • 20 August 2019
  • New legislation

Going further in the search of optimized and more expeditious examination procedures, the Uruguayan PTO decided to use the results of the work done by other PTO’s in order to avoid duplicated efforts and reduce the backlog.

Uruguayan PTO (DNPI) will begin on September 1st 2019 the new Use of Results Pilot Procedure in matters of Patents of Invention and Utility Models.

Thus, International Search and Examination will be considered fulfilled and complied with, for applications initiated before January 1st 2017, by means of the use of examinations made by other PTO’s
The Use of Results Pilot Procedure requires the fulfillment of the following terms:

a) The application has been made before January 1st 2017 and is pending examination
b) The application has been published in Uruguay
c) The examination fee has been paid
d) The application has not been examined yet in Uruguay
e) An existing granted Patent of the invention or utility model in question, from a national or regional PTO.

If the claims upon which the patent has been granted are different from the ones presented before the Uruguayan PTO, when requesting de Use of Results Pilot Procedure, the applicant must adjust the claims in order for them to have the same extent as the granted patent. Said adjustment must not broaden the patent object.

Should you require more information in this regard, do not hesitate to contact us.

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