1. Introduction
Law No. 20.299, enacted on June 21, 2024, approved Uruguay’s accession to the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO), thereby aligning Uruguay with international best practices in patent management.
With this accession, the National Directorate of Industrial Property (DNPI) assumes a key role as Receiving Office and Designated Office, strengthening the national innovation system and facilitating Uruguayans’ interaction with the international patent system.
Although a PCT application does not directly grant a patent, it establishes a common basis for procedures in national phases, giving inventors more time to decide where to seek protection, assess the commercial potential of their invention, and gather the necessary resources to proceed.
January 7, 2025, marks a milestone for Uruguay, as it is the date on which the PCT enters into force in the country. In this context, through Resolution No. 1/2025 of January 16, 2025 ([click here to read it in full…insert link]), the DNPI has established a series of guidelines for the procedures to be followed by users wishing to file international applications under the PCT.
2. DNPI Guidelines – PCT
– Any natural or legal person who is a national or resident of Uruguay (by creating a personal WIPO user account) may file an international application electronically using the ePCT system (WIPO’s online portal for PCT applications) and choosing DNPI as the Receiving Office.
– The only filing language accepted by DNPI is Spanish.
– The international application must be accompanied by certain documents (all detailed in the Resolution), which must comply with the formats established by Rule 11 of the PCT Regulations.
– One or more earlier applications filed in any Paris Convention member country may be claimed as priority, provided they are not older than January 7, 2024.
– The applicant must pay three main fees: the transmittal fee, the international fee, and the search fee, with updated values available on the WIPO and DNPI websites. DNPI, acting as the Receiving Office, collects the fees and transfers them to WIPO.
– If the applicant is an individual who is a national of or domiciled in Uruguay, they will receive a 90% reduction in the international fee.
– The International Searching Authorities (ISAs) chosen by DNPI are: i) National Institute of Industrial Property of Chile (ISA/CL), ii) National Institute of Industrial Property of Brazil (ISA/BR), iii) Spanish Patent and Trademark Office (ISA/ES), iv) European Patent Office (ISA/EP), v) United States Patent and Trademark Office (ISA/US), vi) Intellectual Property Office of Singapore (ISA/SG), and vii) Japan Patent Office (ISA/JP).
– As Receiving Office, DNPI has specific responsibilities within the process, including: i) formally examining the application (ensuring compliance with PCT Article 11.1 requirements), ii) assigning the international filing date, and iii) coordinating the transmission of the original application to WIPO and a copy to the selected International Searching Authority.
– Only PCT applications filed internationally from January 7, 2025, onward may enter the National Phase in Uruguay.
3. Final Considerations
The entry into force of the PCT places Uruguay on the global innovation map, aligning it with international standards that promote the development of new technologies. This shift not only benefits inventors but also boosts foreign investment and enhances the competitiveness of local companies. However, it is important to note that this system does not completely eliminate intellectual property challenges in Uruguay.
With this initiative, Uruguay takes another step toward integration into the global ecosystem of innovation and knowledge. The PCT becomes a strategic tool for inventors, companies, and universities aiming to enter international markets and protect the fruits of their creativity and effort.
In summary, Uruguay’s accession to the PCT is a significant advancement, but it should not be considered an end in itself. Rather, it is part of a broader effort to improve competitiveness and foster sustainable innovation in the country. As always, close monitoring of its implementation will be essential to identify and address areas for improvement.
Author: Radoika Morales
Uruguay
