Reduction in the number of office actions during patent examination

31. October 2018

By Marta Garcia

On October 26, 2018, the Uruguayan PTO published Official Notice 5/2018 which establishes a maximum number of two office actions issued during the substantive examination of patent applications and utility models.

This Official Notice, which will enter into force on November 1, 2018, revokes previous Notice 11/2015, which stated that the Patent Office could issue a maximum of three office actions during the examination of patent, utility models and industrial design applications.

Regarding the terms to file a response to the office actions issued during the examination of patent and utility model applications, Notice 5/2018 further establishes that:

– The term to respond to an office action issued during substantive examination will be of 45 days, which can be extended once for an additional 45-day term.

– If after the reply to the office action or within the deadline to answer it, new elements arose, which could affect the patentability, the examiner may issue a further single office action granting a term of 30 days to respond, extendable once for an additional 30-day term. In these cases, the examiner must expressly indicate the new elements causing the issuance of a further office action.