By Mariano Municoy. Partner, Lawyer, and Head of Moeller’s Regional Legal Department.
On December 10th, 2020 the Congress of Uruguay modified article 99 of its Patent Law Number 17164, which had been modified in 2013, to implement protection against patent infringement occurring between the time that goes between the publication of the application, and it’s granting.
Article 289 of Budget Law approved by the Congress set forth the new article 99 of the Patent Law, which has entered in force on January 1st, 2021, and reads:
“The owner of a patent may take the corresponding actions against anyone who infringes the rights arising thereof and may even claim compensation for the acts carried out between the publication of the application and the granting of the patent.
When the right belongs to numerous owners, any of them may take the corresponding actions.
The possibility of claiming compensation for the acts carried out between the publication of the application and the granting of the patent shall not apply in the case of patenting of pharmaceutical products, except in the cases where it has been irrefutably proven that a substantial part of its development has actually taken place in the country (Uruguay)”
Defining when the development of a “substantial part” of pharmaceutical products has taken place in Uruguay seems a vague legal standard so local judges and tribunals will have to clarify it in the future.