Uruguay Approves the PCT

On June 11, 2024, the Chamber of Senators of the Parliament of Uruguay finally approved Uruguay’s accession to the Patent Cooperation Treaty (“PCT”), thus completing its approval by both houses of the Uruguayan Parliament.

This constitutes an important milestone for the protection of innovation and industrial property in Uruguay, in a process that involved successive previous instances of attempts at parliamentary approval of the PCT Treaty in a space of approximately 30 years.

The bill was approved on June 4, 2024 by the House of Representatives and on June 11, 2024, by the Chamber of Senators.

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

Following the procedure of drafting laws, it now remains for the promulgation of the bill by the Executive Branch and then its publication in the Official Gazette to complete the procedure for legislative ratification of the PCT.

After legislative approval, the implementation phase of the provisions of the Treaty remains.

Backgrounds. Executive Message to the Parliament.

The Patent Cooperation Treaty (PCT), signed in Washington on June 19, 1970, amended on September 28, 1979, amended on February 3, 1984 and October 3, 2001, now has 157 acceding countries.

On July 28, 2023, and for a third time, the Uruguayan Government submitted a draft Bill to Parliament for approval and access to the Treaty.

As is well known, PCT offers assistance to those seeking international patent protection for their inventions and also assists National Offices in decisions on the granting of patents. In addition, it makes available to the public access to extensive technical information relating to inventions.

When filing an international patent application under the PCT, applicants have the possibility to protect their invention globally in a large number of countries, for which, after an international phase, they must start a national phase in each country in which they wish to obtain the patent.

The PCT seeks to make the patent registration procedure more efficient and economical for the inventor.

It is important to emphasize that it is an administrative instrument, which does not establish substantive rules on patenting or modify the possible exceptions or exclusions to patentability admitted by other multilateral regulations (WTO TRIPS Agreement).

The ease provided by the PCT is the simplification of bureaucratic processes since it facilitates at least one step to the local offices of each country, when doing an international search for evidence on whether a potential invention has already been registered or used.

When it submitted the draft Bill for accession to the PCT to the Parliament, the Uruguayan Executive – in its Message to the Parliament – set forth the benefits of the Treaty for the innovation sector.

The Executive expressed that the function of the PCT procedure is to facilitate and reduce the cost of filing patent applications by streamlining and simplifying formalities.

The Message to the Parliament also sets forth that an analysis of the provisions of the Treaty and the Regulation shows that the PCT is a procedural treaty, which does not affect in any way the national phase and the patentability requirements established in national legislation and neither can it replace the work of National Offices.

The Executive further added that, as they are procedural provisions, they do not interfere with or limit national sovereignty, since from the substantive point of view each office will apply its internal regulations and, in accordance with them, it will grant or deny registration. This is why it is a system of submission of applications, and not of granting. It also follows that there is no recognition of automatic requests.

The Message to the Parliament emphasizes that it should also be noted that the application through the mechanism provided for in the PCT is optional, and the application may be submitted by applying the Paris Convention.

Based on the above, the Executive underlines that the PCT system does not limit the space for development and implementation of policies for countries regarding what is patentable, nor the use of flexibilities provided for in the TRIPS Agreement of the WTO of 1994. This explains – the Executive expressed – why even countries with strong policies for pharmaceutical patents, such as Brazil and India, have been part of the PCT, since 1978 and 1998, respectively.

Finally, the Executive stressed that Uruguay´s participation in an international ecosystem that takes the PCT as its common denominator for the protection and promotion of innovation will help the country consolidate its own innovative ecosystem, facilitating the transfer of and the creation of new local spaces for development with projection worldwide. At the same time, not being a party to the PCT prevents Uruguay from participating in its various instances of adjustment and debate in the international forum.

Debate and parliamentary discussion.

However, as in previous cases, the draft Bill to access PCT immediately sparked a strong reaction by the local pharmaceutical industry.  The initial review of the draft bill was conducted by the Commission on Innovation, Science and Technology of the House of Representatives.

The Commission received a number of delegations of authorities (members of the Executive), of supporters of the draft bill, and of parties opposing the same.  Substantive arguments in favor of PCT were submitted by the Executive, the Ministry of Industry, Energy and Mining, the Uruguayan PTO, academic sector, innovation entities, universities, and representative organizations of various industry sectors.

Approval.

Finally, after many years, Uruguay has adhered to the PCT.

The Uruguayan PTO and the Ministry of Industry, Energy and Mining (“MIEM”), have celebrated this milestone and expressed the following:

“Accession to the PCT represents a strategic step in strengthening Uruguay’s patent system, as it facilitates the protection of innovations at the international level for Uruguayan inventors, entrepreneurs and companies. This achievement is the result of the effort and commitment of the Ministry of Industry, Energy and Mining (MIEM), its National Directorate of Industrial Property and the authorities; and the consistent support of various institutions in the country to modernize and align our regulations with international standards”.

Implementation.

As already expressed, there are steps remaining for the effective implementation of PCT, and we will be monitoring further developments as well as relevant dates for the effective application of the Treaty in Uruguay.