PCT in Uruguay: Entry into Force, updated, Status, and Steps Towards Implementation

Background: Approval of PCT by Law No. 20.299 of June 21, 2024

As may be recalled, on June 11, 2024, the Senate of the Parliamentof Uruguay finally approved Uruguay’s accession to the Patent Cooperation Treaty (PCT), thus completing its approval by both houses of the Uruguayan Parliament.

This marked a significant milestone for the protection of innovation and industrial property in Uruguay, culminating in a process that involved multiple previous attempts at parliamentary approval of the PCT over approximately 30 years.

It is important to note that Uruguay’s accession to the PCT was approved with a reservation to Chapter II (“International Preliminary Examination”), as provided in Article 64(1) of the Treaty.

The law was promulgated by the Executive Branch on June 21, 2024, as Law No. 20.299, titled “ADHESIÓN DE LA REPÚBLICA AL TRATADO DE COOPERACIÓN EN MATERIA DE PATENTES (PCT)”, and was published in the Official Gazette on July 10, 2024.

October 7, 2024 – Deposit of the Instrument of Ratification with WIPO

On October 7, 2024, Uruguay took a further and important step towards the implementation of the Patent Cooperation Treaty (PCT).

On that date, authorities from the Ministry of Industry, Energy and Mining (MIEM) and the National Directorate of Industrial Property (DNPI) of Uruguay deposited the instrument of ratification of the Treaty with WIPO in Geneva, in the hands of Mr. Daren Tang, Director General of the Organization.

As a result, the three-month period for the entry into force of the PCT began, with the Treaty officially entering into force for Uruguay on January 7, 2025.

Steps Towards Implementation of PCT by the Uruguayan Patent Office

After its entry into force, the Uruguayan Patent Office (“DNPI”) initiated a preparation and training stage to ensure the proper implementation of the Treaty.

On January 3, 2025 (a few days before the entry into force of the PCT in Uruguay), the DNPI announced the issuance of Resolution No. 23/024, establishing the applicable fees for PCT applications in Uruguay when acting as a Receiving Office for an international PCT patent application filed through the ePCT-Filing system.

Key Fees Established in Resolution No. 23/2024:

• Transmittal Fee under PCT Rule 14.1: Set at the equivalent in Uruguayan pesos of USD 100, encouraging accessibility to the system.
• International Filing Fee and Supplementary Fee (for each sheet exceeding 30, under PCT Rule 15): Set in Uruguayan pesos equivalent to the amount established by the International Bureau in the Schedule of Fees, effective July 1, 2024.
• International Search Fee (PCT Rule 16): Set in Uruguayan pesos equivalent to the amount established by the selected International Searching Authority (ISA) at the time of filing. Adjustments will follow updates by ISAs.
• Priority Document Fee (PCT Rule 17.1(b)): Set in accordance with Article 117, paragraph B, numeral 12 of Law 17.164.
• Fee for Petition for Restoration of the Right of Priority (PCT Rule 26bis.3(d)): Set at USD 400, payable in Uruguayan pesos.

This Resolution entered into force alongside the PCT on January 7, 2025, marking Uruguay’s integration into the global patent protection network and simplifying the process for inventors seeking international protection.

Frequently Asked Question: When Can National Phase Applications Be Filed in Uruguay?

The national phase entry will become available 18 months after the PCT’s entry into force in Uruguay.

• International applications filed on or after January 7, 2025, will benefit from the PCT and will have the option to enter the National Phase in Uruguay.
• Since Uruguay deposited its instrument of ratification with WIPO on October 7, 2024, the PCT became effective on January 7, 2025.  Uruguay officially became a PCT member and becameeligible as a designated office for national phase entries.
• Thus, in order for PCT applications to enter the national phase in Uruguay, their international filing date must be January 7, 2025, or later, regardless of whether the 30-month period for entering the national phase is still running.
• In practice, Uruguay will start accepting National Phase applications as of July 7, 2026.

Uruguayan Patent Office Resolution No. 1/2025 – Key Guidelines for PCT Implementation

As part of the steps towards the effective implementation of the PCT, on January 16, 2025, the Uruguayan Patent Office (DNPI) issued Resolution No. 1/2025, setting out key procedural guidelines for PCT implementation in Uruguay.

Main Highlights of Resolution No. 1/2025

• Uruguay’s PCT accession (Law No. 20.299) was formalized with a reservation to Chapter II.
• The DNPI will act as:
  • Receiving Office (RO)
  • Designated Office (DO) for international applications.

Submission of Applications

• Eligibility: Any Uruguayan national or resident may file PCT applications.
• Language: Only Spanish is accepted.

Required Documents

• Request (Form PCT/RO/101)
• Description of the invention
• PCT-compliant claims
• Drawings (if applicable)
• Summary (per PCT rules)

Timelines and Priority Claims

• Priority can be claimed over previous Paris Convention applications.
• Time limit: 12 months from the original filing date.
• Restoration of Priority: Possible within 2 months after expiration if justified and subject to a special fee (Resolution No. 23/2024).

Applicable Fees and Discounts

• Transmission Fee, International Fee, and Search Fee apply.
• 90% reduction in the International Fee for Uruguayan nationals or residents.
• Payments must be made in Uruguayan pesos through the DNPI.

Authorized International Searching Authorities (ISAs)

Applicants can select from the following ISAs:

• INAPI Chile
• INPI Brazil
• SPTO (Spain)
• EPO (Europe)
• USPTO (USA)
• IPOS (Singapore)
• JPO (Japan)

Translations into the language accepted by the selected ISA may be required.

Formal Examination of the Application

The DNPI will verify compliance with the formal requirements under Article 11 of the PCT:

• In case of errors, the applicant will be notified, who will have 2 months to correct them.
• If they are not corrected, the application will be considered withdrawn.

Entry into the National Phase

To enter the national phase in Uruguay:

• Applications must be submitted within 30 months from the priority date, along with payment of national fees.
• Only international applications filed on or after January 7, 2025, may enter the national phase.

Conclusion

Uruguay is committed to strengthening its intellectual property system, promoting innovation, and aligning with international standards.

We have not yet seen publications of international applications filed through the DNPI, but this will likely change as Uruguay fully integrates into the system.

While we are still in the early stages of implementation, the scientific and innovation communities have welcomed the approval and application of the PCT as a significant milestone for the future.