The patent system in force is intended to be an effective means to foster investment, either national or foreign, consisting of research development, national production and manufacturing, and resulting in the possibility of increasing the export of national value-added products. One way to achieve this is through a proper legislation of patents of revalidation that provide national protection to foreign inventions protected by patents of invention granted abroad.
Patents of revalidation were expressly stated in the former Patent Act No. 10089 of the year 1941. During the term of said law, the patents granted abroad could be subject to revalidation provided they were in force, and that the inventions had not been exploited in Uruguay before the date of application of the patent of revalidation, being the term of protection that which remained of the foreign patent, with a maximum of 15 years.
The phenomenon of the disappearance of the Institute of Patents of Revalidation in South America was in the context of the ratification of the TRIPS Agreement (Traded-Related Aspects of Intellectual Property Rights), on the one hand, and the ratification by many countries of the Patent Cooperation Treaty (PCT), on the other. The PCT provides a term of 30 months as from the priority date in order to select the countries where the applicant intends to protect the invention. In practice, this extends the priority period of the Paris Convention from 12 to 30 months. Therefore, an extended timeframe is bestowed upon the inventor in order to select the countries of interest for patenting his invention. By having joined the PCT, it seems logical that developed countries may have lost interest in revalidation. However, since several South American countries have not yet adhered to the PCT, patents of revalidation remain a convenient solution: they are not detrimental to national industry, and also provide a stimulus to foster investment and economic development. If a foreign company is granted the right to exploit a patent, investing in the country where the same will be enforced will be far more attractive. It is a way, among many others, to help developing countries to attract foreign investment.
With the entry into force of the new Patent Law No. 17,164 of the year 1999, the regulations regarding patents of revalidation were not maintained, disappearing all mention to the institute. This notion was regarded as incompatible with the concept of novelty or the scope of the priority right as stated by the protection system of the TRIPS and the Paris Convention.
But Article 125 of our law in force, within the so-called transitional rules (the term until when they would cease to apply was not established) states that “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 provided 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 grant date of the patent- for the exploitation of the object of the corresponding patent in the country and provided said patent has been applied for before the Industrial Property Office as from January 1st, 1995”.
This article establishes that foreign patents can be applied for in Uruguay, when the first application was filed in a country member of the WTO so long as the same has not been commercially exploited when granted. These seem to be the same requirements of the so called patents of revalidation, whose characteristic is that the novelty is relative (they lack of absolute novelty, having already passed the year established by the Paris Convention)
Although the TCA (in accordance with the Spanish Acronym ‘Administrative Court’, the body that has the final decision in administrative matters) every time it ruled on the institute of patents of revalidation, it expressed plain denial; on one occasion, it applied said article 125, without mentioning the issue of revalidation, Judgment 602/2010, Abbot c / State, Ministry of Industry.