Guidelines following Uruguay's accession to the Patent Cooperation Treaty

As previously reported, the Uruguayan Congress approved the country's accession to the Patent Cooperation Treaty (PCT) in June 2024, and the Uruguayan Government deposited its instrument of accession to the treaty on 7 October 2024. The PCT officially entered into force in Uruguay on 7 January 2025, and any PCT application filed after that date could include Uruguay as a designation.

The Uruguayan Patent and Trademark Office (DNPI) has now issued its first regulation (Resolution 1/2025), which establishes the initial legal framework for PCT applications in Uruguay. The DNPI will serve as both the Receiving Office (RO) for international applications and the Designated Office (DO) for national phase applications under the treaty.

Key Provisions of the Regulation:

• The deadline for filing a national phase application in Uruguay is 30 months from the earliest priority date.

• Spanish is the only accepted language for such applications.

• A PCT application will have the same legal effects as a national application, as of the international filing date which will be treated as the national filing date.

• When the DNPI acts as a DO for national phase applications, the deadlines and official fees will be the same as those for national patent applications.

• To restore expired priority rights (PCT Rules 26bis.3 and 49ter.2), the applicant must submit a declaration explaining the reason for failing to file the international application within the priority period (due care or unintentional failure when acting as the RO; only due care when acting as the DO) and pay the corresponding fee.

• Any person who is a national or resident of Uruguay may file applications through the WIPO ePCT system and choose the DNPI as RO.

• Uruguayan nationals or persons domiciled in Uruguay will be eligible for a 90% reduction in the international filing fee. In the case of multiple applicants, all applicants must meet these criteria.

• The competent International Search Authorities for Uruguay are: INPI (Chile), INPI (Brazil), OEPM (Spain), EPO (Europe), USPTO (USA), IPOS (Singapore), and JPO (Japan).

The DNPI is expected to issue additional regulations and clarifications in the coming months.

In the meantime, we would be pleased to assist you with any enquiries and with your patent applications in Uruguay.