Patents & Utility Models

Our Patent Department specializes in the national and international registration and protection of patents, utility models and industrial designs.

In order to do so, we count with a highly specialized team formed by engineers, lawyers and industrial property agents among which there are ex-examiners of the Oficina de Patentes de Uruguay (Uruguayan Patents Office).

Our high involvement in the patent registration market put together with the international acknowledgement of our firm locates us a step ahead when counseling our clients during the process of search and registration of patents as well as during the opposition, appeal or annulment of patent rights of third parties that imply a risk or damage for the commercial activity or the patent assets of our clients.

In addition, our experience in the litigious area and the comprehensive counseling of patent matters contribute to the fact that we can offer our clients a comprehensive service in this area.

Services Fernández Secco offers in the patent and utility models area:

  • Investigation of the state of the art and preparation of legal opinions about the patentability of the invention.
  • Drafting and registration of applications of invention patents and utility models and the presentation of application for registration of industrial designs.
  • Management of the maintenance of annual payments nationally and internationally.
  • Counseling and elaboration of legal opinions on the validity and or infraction in matters of patents, utility models and industrial designs.
  • Negotiation and elaboration of contracts for technology transfer and contracts for assignment of patents and technical knowledge (know-how).
  • Performance in litigious matters in litigations about the validity and/or infraction of patents, utility models and industrial designs.

New inventions of products or procedures that mean an inventive activity and are liable of industrial application are deemed patentable.

– Power of attorney. Duly completed with the applicant’s complete name, domicile and including the complete name of his representative. The same does not require any certification or legalization of signatures and can be sent to us by e-mail or fax, and later by ordinary mail.

– Priority Document. Uruguay is not a member of the PCT (Patent Cooperation Treaty). In case priority is claimed there is a 90 days period as from the patent’s application date in Uruguay to submit the priority document issued by the Patent Office in the country of origin with its translation into Spanish.

– If priority is claimed and the priority document is not available at the time of the application, the exact information of the priority must be provided: a) country, b) application number and c) date of the application which priority is claimed.

– Patent Document. It must contain the following:

– Applicant’s full name, nationality (if he were a natural person) or place of incorporation (in case of companies) and domicile.

– Full name and domicile of the inventor or inventors (in case he is not the applicant).

– Specifications: the technical field of the patent must be detailed, describing the previous art and the invention.

– The application must be done in Spanish.

– Claims.

-Drawings.

– Summary of the patent: it must not be over 100 words.

Patent Registration Procedure

– Payment of the publication fees can be done together with the application or up to 18 months as from the application date or from the priority being claimed.

– As from the publication date there is a 60 days period in which objections from third parties can be filed.

– Also starting from the publication date there is a period of 120 days to initiate the analysis before the DNPI.

– The patent will be studied by the examiners and if no third parties or sua sponte actions are presented the Patent will be granted.

– Once the patent registration is granted the fees corresponding to the certificate of registration must be paid. After the patent is registered the titleholder shall have to pay annuities.

– According to our Patent Law, patents are granted for 20 years as from the application date.

– Language. The application must be done in Spanish. In case priority is claimed, it is an essential requirement that the translation is done by an authorized Uruguayan Public Translator.

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.

– Power of attorney. Duly completed with applicant’s information. It does not require any certification of signatures or consular legalization. It can be sent by e-mail or fax and later by ordinary mail.

– Priority Document. If priority is claimed there is a 90 days period, as from the filing application date in Uruguay to submit the priority document issued by the Patent Office in the country of origin with its translation into Spanish.

– If priority is claimed and the priority document is not available at the time of the application, all the information about the priority must be provided: a) country, b) application number and c) date of the application which priority is claimed.

– Information about the applicant. Full name, nationality (if he were a natural person) or place of incorporation (in case of companies) and domicile.

– In case the inventor is not the applicant, the following information about the inventor must be provided: full name, inventor’s identity card number and domicile. In case there are several inventors, information about all of them must be provided.

– Patent Specifications. Copy of the invention’s patent specifications, drawings and claims.

– Summary of less than a hundred(100) words for publication.

– Language. The application must be done in Spanish. If priority is claimed, it is an essential requirement that the translation is done by a Uruguayan Public Translator.

Procedure

– Payment of the publication fees can be done together with the application or up to 18 months as from the application date or from the priority being claimed.

– The Utility Model will be published in the Trademark and Patent Bulletin issued by the DNPI after three (3) months of its application date.

– As from the publication date there is a 60 days period in which objections from third parties can be filed.

– Analysis. Starting from the publication date there is a period of 120 days to apply for an analysis before DNPI.

– Later the Utility Model application will be studied by the examiners and if no third parties or sua sponte actions are presented the Utility Model will be granted.

– As soon as the Utility Model Registration is granted the final concession fees, the title and the first annuity shall be paid.

-Utility Models last 10 years from the application date and they could be renewed for 5 more years.

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