About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

Legislative Implementation of Flexibilities - Uruguay

Title:Articles 54-55, 60-61, 69-70 and 73 of the Law No. 17.164 of 13/01/2000 Regulating Rights and Obligations Relating to Patents, Utility Models and Industrial Designs
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

54. Any interested party may request a compulsory license after three years have elapsed since the grant of the patent or four years since the date of application, whichever expires last, if the invention has not been exploited or if serious and effective preparations have not been made for its exploitation or if exploitation has been suspended for more than one year, provided that there are no reasons of force majeure.

In addition to the reasons recognized in the legislation, insurmountable objective problems of a technical or legal nature such as delays in the granting of authorizations by government bodies, independent of the will of the owner of the patent, which make working the patent impossible, shall be considered reasons of force majeure.

The exploitation of a patent shall include its production, use, import or any other commercial activity undertaken and related to its subject matter.

In this respect, the working of the patent by a representative or licensee shall be considered carried out by the owner of the patent.

55. In special situations that might affect the general interest, defense or national security, the economic, social and technological development of certain sectors strategic for Uruguay, as well as for urgent health reasons or other like reasons of public interest, the Executive may, by means of a special resolution, grant compulsory licenses or other uses without the patent owner's consent and their scope and term shall be adapted to the purpose for which they were granted.

60. By means of a special decision, the National Industrial Property Directorate may grant compulsory licenses for a patent if the competent authority, following administrative or judicial proceedings which give the owner the right of defense and other guarantees, has determined that the owner has been involved in anti-competitive practices, or has abused the rights conferred by the patent or a dominant market position.

61. The circumstances cited in the preceding Article shall include the following:

(a) the fixing of prices that are excessive in comparison with the average international market price for the patented product;

(b) offers to supply the market at prices significantly lower than those proposed by the owner of the patent;

(c) refusal to furnish the local market with adequate and regular supplies of the raw materials or the product patented, on fair commercial terms;

(d) obstructing or causing prejudice to commercial or production activities in Uruguay;

(e) any acts which restrict trade to an unjustified degree or are detrimental to the transfer of technology.

69. If a patented invention or utility model cannot be exploited in Uruguay without infringing an earlier patent, the owner or a licensee under any title of one of the patents may request the grant of a compulsory license covering the other dependent patent if it is needed to work the patent and avoid infringement.Where the subject matter of one patent is a product and the subject matter of the other a process, it shall be considered that they are dependent patents for the purposes of their working.

70. Licenses or uses without the owner's consent for the purpose of working a dependent patent shall be granted subject to the following conditions:

(a) the invention claimed in the second patent must represent a significant technical step of considerable economic importance in comparison with the invention claimed in the first patent;

(b) the owner of the first patent shall have the right to obtain a cross license on fair terms in order to work the invention claimed in the second patent;

(c) assignment of the authorized use of the first patent shall include use of the second patent.

73. A compulsory license or other uses without the owner's consent may not:

(a) be exclusive;

(b) be the subject of a sublicense;

(c) be granted to a defrauder;

(d) be transferred without the firm or enterprise or the part thereof which exploits the subject matter of the license.

https://www3.wipo.int/contact/en/area.jsp?area=development_agenda https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/