RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/330
29 January 2002
(02-0406)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Responses from Uruguay to Questions Posed by Canada, the European Communities
and their Member States, Japan, Switzerland and the United States
By means of a communication from the Permanent Mission of Uruguay, dated
26 November 2001, the Secretariat has received the following responses to questions posed byCanada, the European Communities and their member States, Japan, Switzerland and the
United States, as circulated in documents IP/C/W/314, 320, 322, 315 and 316, respectively.
_______________
CANADA
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS
Agreement) have been implemented.
Article 41 . Expeditious deterrent action, both administrative and judicial, can be taken against
any act of infringement:
From the administrative standpoint, bot h Trademark Law No. 17.011 and its Regulatory
Decree No. 34/99 and Patent Law No. 17.164 and it s Regulatory Decree No. 11/00 provide for special
administrative procedures based on the latest standards.
From the judicial standpoint, both Law No. 17.011 and Law No. 17.164 establish, in Articles
81 to 85 and 106-107, respectively, offences and penalties for infringers of industrial property rights:
trademarks and appellations of origin, in the first case, and patents, utility models and industrial
designs, in the second.
Likewise, Articles 87 and 88 of Law No. 17.011  and Articles 99 to 105 of Law No. 17.164
provide for civil proceedings for infringements of the trademark and patent regulations.
All these proceedings, both administrative and judicial, whether criminal or civil, are based
on the constitutional principle of due process.  Th e administrative procedure is laid down in special
laws and decrees, as well as in General Decree No. 500/91 which applies to the Uruguayan public
service in general.  Civil proceedings are governed by the General  Code of  Procedure (GCP) and
criminal proceedings by the Code of Criminal Procedure (CCP).
Administrative decisions are taken by the competent administrative authority through
administrative acts, which are always reasoned and in writing, within a file that always takes written
form. Judicial decisions (judgments), also in writing and duly reasoned, are taken by the judges who
make up the judiciary. These decisions must be notified to the parties personally or, if this is
physically impossible, by means which ensure that the interested party is aware of them.IP/C/W/330
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As far as evidence is concerned, all the parties involved have an opportunity to produce
evidence, to verify the evidence produced by the other party and to submit arguments relating to the
evidence produced. The time limits for producing evidence,  the way in which the evidence is
presented and  the form it takes are all regulated, as are the time limits for processing it and for
submitting arguments.
Administrative decisions can be reviewed by a specialized five-member quasi-judicial body
(Administrative Tribunal).  Judicial decisions made by judges in the courts of first instance, whether
civil (civil or district judges depending on the jurisdiction) or criminal, can always be reviewed by the
specialized appeal courts.  In these cases, the judgements, depending on the jurisdiction, can be set
aside by the five-member Supreme Court of Justice, the highest judicial authority.
Article 42 . The judicial procedures concerning enforcement are laid down in Articles 87 and 88
of Trademark Law No. 17.011, which authorize actions for damages and the prohibition of the use of
infringing marks, and Articles 99 to 105 of Patent Law No. 17.164, which authorize actions against
anyone performing acts in violation of the rights deriving therefrom. In these cases, the interested
parties may make use of the ordinary proceedings laid down in Articles 337 et seq.  of the GCP or the
precautionary proceedings laid down in Articles 311 et seq.  of the same Code. Those concerned are
personally notified of all complaints and receive a copy of the document. Article 44 of the Code
permits the parties to be represented by their at torney, except at the preliminary hearing when they
must appear in person accompanied by a lawyer. The court costs correspond to the fees and charges
laid down by the budgetary laws in force and are relatively low.  Each party must attach to thecomplaint or plea the evidence on which its arguments are based (Articles 117 and 131 GCP) and this
evidence is collected by the Court:  the documentary evidence is combined with the notification of the
other party, the procedural documents are processed and witnesses are questioned (Articles 341 and
343 GCP). The two parties then plead on the basis of the evidence presented (Article 343 GCP) and,
finally, the judge delivers a duly reasoned judgem ent (Article 343 GCP), which may be appealed by
either of the parties (Articles 248 to 261), in which case the file is transmitted to a three-member
higher court or tribunal (Article 344 GCP).  As regards the identification and protection of
confidential information, if the party required to su bmit it can justify its request for confidentiality, the
judge in the proceedings may take the measures necessary for its protection. Moreover, the law
expressly provides for this in criminal inquir y proceedings under the CCP and in connection with
confidential precautionary measures under the GCP, etc.).
Article 43 . Article 168 of the GCP allows the plaintiff to request that the other party be ordered
to produce documentation within its control which the plaintiff wishes to use.  The same article
stipulates that refusal may be regarded as acknowledgement of content.
Article 44 . There is no such legal authority in the field of intellectual property right protection.  It
is expressly provided for in cases of infringement of the customs regulations, namely:  in cases of
fraud, discrepancies and smuggling under Article 245 of Law No. 13.318.
Article 45 . Article 87 of Trademark Law No. 17.011 and Articles 99, 100 and 102 of  Patent Law
No. 17.164 empower the ordinary courts to order infr ingers of industrial property rights to pay
damages where there is fault or fraud. The payment of costs and charges may be ordered only in cases
of bad faith or culpable negligence.  In general, Articles 1.319, 1.323 and 1.324 provide for liability
and damages where there is fault or fraud.
Article 46 . Where an offence has been committed, Article 84 of Trademark Law No. 17.011
provides for the marks and the implements used for making them to be destroyed or rendered
unusable and for the infringing goods to be forfeited and destroyed, unless they can be awarded to
public or private charitable institutions.  Article 106 of Patent Law No. 17.164 provides for the seizure
of the infringing goods and the implements used in making them and for their fate to be decided in
consultation with the NIPD.IP/C/W/330
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Article 47 . This is within the powers of the investigating judge, always provided that due process
is observed.
Article 48 . This possibility always exists insofar as injury consequent upon the abuse of
procedures can be proved.  The payment of costs may also be ordered where reckless malice can be
shown.
Article 49 . Every kind of civil proceedings, whether the result of an administrative act or of an
infringement on the part of a private individual, affords the same guarantees of due process and is
governed by the General Code of Procedure.
Article 50.1 . Article 103 of Patent Law No. 17.164 provides for the adoption of provisional or
precautionary measures in accordance with the GCP.  Article 317 of the GCP deals with provisional
measures, laying down the same procedure as for precautionary measures (Articles 311 and 316).
Where the preservation of evidence is concerned, in addition to these articles, Article 309.6 on
preliminary measures also applies.
Article 50.2 . Article 315 of the GCP provides for measures of this kind to be ordered without the
knowledge or intervention of the other party.
Article 50.3 . Articles 314.2 and 314.3 of the GCP require the production of prima facie  evidence
and the provision of counter-security, and the adoption of the measure is decided as soon as the
evidence has been examined.
Article 50.4 . Article 315 of the GCP provides for notification of the measure immediately upon
execution, and both the person affected by the measure and the applicant may appeal the decision.
Article 50.5 . The court may always request further evidence of the right in order to facilitate its
decision. This is a general procedural principle enshrined in the GCP.
Article 50.6 . Article 311.2 of the GCP provides for precautionary measures to lapse automatically
if a complaint is not lodged within 30 days and fo r the applicant to be ordered to pay all the costs of
the proceedings and any damages.
Article 50.7 . As already mentioned in connection with the previous article, compensation for
injury is provided for in Article 311.2 of the GCP.
Article 50.8 . Provisional measures may be ordered unde r administrative procedures, since Decree
No. 500/91 on administrative procedures authorizes the application of the GCP, wherever relevant.
Article 51 . The release of goods may be suspended by the judicial (customs court) or
administrative (customs collectors) authorities upon receipt of a substantiated complaint that goods
are about to be imported in infringement of intell ectual property rights. Once it is shown that the
offence is not one of the three for which Law No. 13.318 on customs disputes provides, namely,
smuggling, discrepancies and fraud, the customs court must render account to the Criminal Court.
Article 52 . The characteristics of the application are the same whether it is submitted under the
judicial or the administrative procedure, and under Article 117 of the GCP it must always beaccompanied by evidence of infringement.
Article 53 . The possibility of requiring security is afforded only in cases of a customs offence:
discrepancies, smuggling or fraud, in Articl e 163 of Law No. 17.296 and Decree No. 67/2001.IP/C/W/330
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Article 54 . Notification is always given when Article 51 measures are taken.
Article 55 . If suspension is decided upon by the administrative authority, it has 24 hours to
inform the judge and 5 days to transmit the case file to the customs court (Law No. 13.318). If it is
decided upon by the judicial authority, there is no specified period.
Article 56 . The indemnification of the importer or the owner of the goods must be pursued
before the civil judicial authorities under the above-mentioned general rules on damages of the Civil
Code, in which case injury must always be proved.
Article 57 . Always granted by both the competent administrative (customs) and judicial
authorities.
Article 58 . There is no provision for ex officio  action. Nevertheless, customs administrative
proceedings have been initiated through the Foreign Ministry at the request of another Member’s
Embassy.
Article 59 . Can only be ordered by the criminal court judge once the case enters his jurisdiction.
Article 60 . There is no such provision.
Article 61 . Articles 81 to 83 of Trademark Law No. 17.011 establish offences and penalties
relating to trademarks. There is also provision for the seizure and destruction of the goods (Article 84)
and the protection extends to appellations of origin (Article 85).
Articles 106 and 107 of Patent Law No. 17.164 establish offences and penalties relating to
patents as follows:
Article 106 establishes a penalty of 6 months to three years for anyone who defrauds another
of rights protected by patents. It also provides for the seizure of the infringing products and the
implements used in making them.
Article 107 increases this penalty to 15 months to 4 years in the following aggravating
circumstances:  (a) where the infringer was an employee of the patent owner or a licensee;  and(b) where he obtained from these latter knowledge of the special methods of producing the patented
product.
2. What protection does your copyright legislation afford to "foreign works"?
According to Article 4 of our current Copy right Law (No. 9.739 of 17 December 1937):  “The
legal protection of this right (i.e. copyright) shall be accorded in all cases and to the same extent,
whatever the nature or origin of the work or the nationality of its author and without distinction as to
school, denomination or philosophical, political or economic tendency.”
Thus, the principle of national treatment has long been enshrined in our system of positive
law. Accordingly, in Uruguay a foreign work is accorded exactly the same protection as a national
work. This protection is afforded and made effective by establishing moral and economic rights in
favour of the author and civil and criminal procedures for dealing with infringements.
Moreover, Uruguay has approved the Berne Convention for the Protection of Literary and
Artistic Works (Paris Act of 1971), through Law No. 14.910 of 24 July 1971.
Likewise, through Law No. 16.671, it has also approved the agreements resulting from the
GATT Uruguay Round (TRIPS).IP/C/W/330
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EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. GENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health
and nutrition, and to promote the public interest in sectors of vital importance to your socio-
economic and technological development as mentioned under Article 8 of the TRIPS
Agreement.  If yes, please explain how such measures are consistent with the provisions of the
TRIPS Agreement.
According to Article 55 of the new Patent Law No. 17.164 of 2 September 1999, in special
situations that might affect the general interest, including the economic, social and technologicaldevelopment of certain sectors of strategic importance for Uruguay, as well as for urgent health
reasons or other like reasons of public interest, the Executive Power may, by mean of a special
resolution, grant compulsory licences or other uses without the authorization of the patent owner, their
scope and term being adapted to the purpose for which they were granted. Articles 56 to 59 lay down
specific conditions and procedures for these uses, while the general conditions are set out inArticles 71 to 80.
B.
COPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of
authors in relation to their literary and artistic  works, as specified in Article 9 of the TRIPS
Agreement which requires Members to comply with  Articles 1-21 of the Berne Convention and
the Appendix to the B erne Convention (1971)).
Uruguay approved the Berne Convention by Law No. 14.910 of 19 July 1979.
There have been judicial decisions relating to its application in Uruguay.
At the same time, Uruguayan copyright law provides broad protection for authors, granting
them exclusive rights in various modes of exploitation of their works (Law No. 9.739 of
17 December 1937).
The application of the Berne Convention entails the automatic application of its various
provisions, including derogation from the compulsory registration requirement of the 1937 Law, the
extension of the period of post mortem  protection to 50 years, the presumption of authorship, and the
broad concept of communication to the public. The Berne Convention and the national legislation
have coexisted peacefully and harmoniously, as expressly reflected in repeated decisions by the
courts.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
Although computer programs and databases are not expressly included in the existing
Copyright Law, in Uruguay they have long been treated as copyright-protected works by the
Executive Power, in legal theory and by the courts.
The 1937 Law gives a list of examples of protected works, in the last paragraph of which it is
indicated that the protection extends to “ any product of the intellect ” (Law No. 9.739, Article 5).
Lists of works are purely illustrative in scope.IP/C/W/330
Page 6
The illustrative list in Article 5 is therefore completely consistent, with comparative law and
especially with the Berne Convention.
Despite the lack of an express mention in the le gislation, given its purely illustrative nature,
the national authorities responsible for applying the copyright rules have agreed that computerprograms should be protected through the copyright system. Thus, Executive Decree No. 154/989 of
11 April 1989 allowed computer programs to be registered as works, that is to say, within the
framework of the copyright legislation.
As protected works, computer programs come under the general procedure, whether civil or
criminal, concerning infringements of copyright.
According to authoritative Uruguayan legal writers and the legal precedents, despite not being
expressly included in the Copyright Law, comput er programs qualify for the civil and criminal
protection afforded by Law No. 9.739.
The first court decision was handed down by the Administrative Court, which ruled that
computer programs were products of the intellect and as such covered by Law No. 9.739. The civil
and criminal courts have delivered judgements to the same effect. Today, the situation is being further
consolidated by the provisions following from the approval of the TRIPS Agreement (Law
No. 16.671).
4. Please state whether your legislation provides for a rental right and, if so, the works to
which it applies.
There is no express provision for this right in the national legislation. However, it is
incorporated in the draft law which has been approved by the Chamber of Representatives and iscurrently being considered in the Senate.
Thus, the rental right is included within the notion of public distribution and has been
established in favour of authors in general and producers of phonograms.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organizations under your legislation.
Performers enjoy the rights laid down in th e 1937 Copyright Law. Basically, these rights
comprise:  the right to require payment for thei r performance when broadcast or retransmitted by
radio or television or recorded or impressed on a disk, film, tape, wire or any other material or
medium suitable for audio or visual reproduction. If no agreement can be reached, the amount of thepayment shall be established in summary proceedings by the competent judicial authority (Article 36).
The performer of a literary or musical work may object to the disclosure of his performance if it is
reproduced in such a way as to seriously or unfairly injure his artistic interests (Article 37).
Moreover, by Law No. 14.587 of 19 October 1976, Uruguay approved the Rome Convention,
thereby affording the consequential rights to the holders described therein.
It should also be noted that Law No. 15.289 of 14 July 1982 created a category of criminal
offence designed to protect producers of phonograms and/or videograms from unauthorized
reproductions and including protection for performers.
According to Article 1, “Anyone reproducing a phonogram or videogram for gain and without
the written authorization of its producer, and anyone  distributing to the public or stocking for that
purpose the reproductions thus obtained, shall be liable to the penalty laid down in Article 46 of Law
No. 9.739 of 17 December 1937. The same penalty shall be applicable to anyone fixing the liveIP/C/W/330
Page 7
performance of a literary or artistic work by an y means, clearly for the purpose indicated in the
previous sentence and without the written authorizati on of the author and the performer, as well as to
anyone distributing to the public or stocking for that purpose the versions thus obtained.”
6. Please state whether your legislation provides  for any limitation or exception in relation
to each of the rights described above in acco rdance with the relevant provisions of the Berne
and Rome Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
The limitations and exceptions relating to copyright are those which result from Article 45 of
Law No. 9.739. These are also understood to extend to the copyright regime.
7. Please state the terms of protection of each right described above and the work or
subject-matter to which it applies.
As regards the term of protection, the only point of reference is the periods granted by the
Rome Convention.
In the government bill approved by the Chamber of Representatives and currently being
considered by the Senate, the term of protection is fixed at 50 years.
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPSAgreement) and Article 14.6 of the TRIPS Agreement.
The above-mentioned draft Copyright Law establishes the term of protection at 50 years.
Article 152 of the draft states that “The rights in works and other productions protected under the
previous law which have not entered the public domai n shall be granted the longer terms of protection
accorded by the present Law.”
In Uruguay it has been agreed that since the approval of the Berne Convention the term of
protection laid down in the Copyright Law (40 years) has been extended to 50 years.
When the draft receives legislative approval, performers, phonogram producers and
broadcasting organizations will obtain an extension of the term of protection laid down in the RomeConvention, since they will also be granted a term of 50 years.
9. Please explain whether the droit de suite  provided for in Article 14 ter of the Berne
Convention is protected in your legislation.
Article 9 of Law No. 9.739 establishes the droit de suite  in general form. It reads:  “In any
disposal there shall be understood to have been reserved, in favour of the disposing author, the right to
share in the appreciation of the work, in the profits made by successive purchasers. Any agreement to
the contrary shall be null and void. In each case the percentage of the profit shall be 25 per cent. In the
event of a collaboration or if there is more than one author, the said percentage shall be dividedequally between the interested parties, unless otherwise agreed. On the death of the author, his heirs
and assigns shall retain the same right until the work enters the public domain.”
C.
TRADEMARKS
10. Please give the definition of a sign under your national legislation and explain under
what conditions it is protectable.
According to Article 1 of Law No. 17.011 of  25 September 1998 on trademarks and other
distinctive signs:  “Trademark means any sign capable of distinguishing the goods or services of oneIP/C/W/330
Page 8
natural or legal person from those of other natural or legal persons.” Article 2 includes non-visible
signs, Article 3 advertising slogans, Articles 38 to 43 collective marks, and Articles 44 to
56 certification marks.
11. Please confirm whether or not services are a protectable subject-matter in your
trademark law.  Please confirm if signs, such as trade names, are protectable.  Please describe if
elements such as sound, perfumes and containers are protectable.
As mentioned in the previous reply, service marks are protected by the Law. Moreover,
Articles 67 to 72 protect trade names, without re gistration. As for non-visible signs, as already
mentioned, they are protected by Article 2 of the Law and Executive Decree No. 146/01 provides for
the registration of marks in the form of sounds.
12. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a
registration in that respect.
The use of a trademark is optional (Article 19).  It may, however, be made compulsory for
reasons of public interest or by executive decree.
13. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable.
Article 18 provides for a ten-year period of protection renewable indefinitely.
14. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark.
As already explained, Uruguay does not require use.
D. GEOGRAPHICAL INDICATIONS
15. Please explain whether or not your trademark registration authority refuses a
trademark application if it contains a geographical indication.
Law 17.011 prohibits the registration as a trademark of appellations of origin, indications of
source and any geographical name that is not sufficie ntly original and distinctive with regard to the
goods or services to which it applies or whose use is liable to create confusion regarding the origin,
source, qualities or characteristics of the goods or services for which the mark is used (Article 4(4)).
Moreover, Chapter XII of the Law provides for special protection for geographical indications which,according to Article 73, consist of indications of source and appellations of origin. Article 74 defines
an indication of source as the use of a geographical name on goods and/or services to identify the
place of extraction, production or manufacture of a given product or the provision of a given service,
considered as the place of source. Indications of source are protected without the need for registration.
Article 75 defines an appellation of origin as the geographical name of a country, a city, a region or alocality used to designate a product or service whose qualities or characteristics are exclusively or
essentially due to the geographical environment, including natural or human factors, while Article 76
establishes a register for such appellations and Article 77 lays down the requirements for their
protection.
16. Please give the definition of a geographical indication in your legislation.
See reply to Question 15.IP/C/W/330
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17. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
See reply to Question 15.
18. Please describe how additional protection is granted by your legislation to wines and
spirits.  Please mention other types of products, if any, covered by this additional protection.
The additional protection required by Article 23 of the TRIPS Agreement is included in the
protection afforded by the rules mentioned in the reply to the previous question.
19. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in
your jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of
names considered as generic in your jurisdiction.
Given the scope of the protection afforded by the Uruguayan legislation, no use has been
made of the exceptions under Article 24 of the TRIPS Agreement.
E. INDUSTRIAL DESIGNS
20. Please explain whether or not your legislat ion extends to the protection of designs
dictated essentially by technical or functional considerations.  Please explain how textile designs
are protected.
According to Article 89(c) of Law No. 17.164 on patents, utility models and industrial
designs, designs dictated essentially by the desire to obtain a technical effect or by technical
requirements or functional considerations may not be the subject of an industrial design patent.
There is no special procedure in the Patent Law for the protection of textiles. However, given
the time-limits, the possibility of early publication and the optional nature of the substantive
examination to be carried out by the NIPD, the procedure for which the new Law provides
(Articles 92 to 97) enables protection to be obtained relatively quickly, in accordance with
Article 24.2 of the TRIPS Agreement.
(At the same time, it should be borne in mind that, in accordance with Article 87 of the
Law 17.164, the protection conferred on industrial designs under the Law does not exclude or affect
the protection that may be granted to the same design under other intellectual property protection
regimes, which would include the parallel protection of the same design by copyright, provided it met
the corresponding requirements.)
21. Please explain how your legislation protects right holders of a design against importing
of articles bearing embodied or copied design.
Under Article 88 of Law No. 17.164, the owner of a patent for an industrial design has the
right to prevent third parties from making, selling, offering for sale, using, importing or stocking forcommercial purposes a product bearing a design reproducing his own design or like designs
incorporating his design or differing from it only in minor respects.
22. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
Article 98 stipulates that the provisions on pate nts also govern industrial designs, insofar as
they are applicable. Consequently, the rules concerning compulsory licences and other uses inIP/C/W/330
Page 10
Articles 54 to 88 authorize, in principle, the issuing of compulsory licences for industrial design
patents, provided that one or other of the reasons for granting such licences applies.
23. Please indicate for what period of time your legislation grants protection for industrial
designs.
Under Article 97 of the Law, the term of protection for industrial designs is 10 years from the
date of filing of the application, with the possibility of an extension for a further 5 years at the request
of the patent owner.
F. PATENTS
24. Please describe how your legislation defines the notions of:  novelty, inventiveness and
industrial application.
According to the first paragraph of Article 9 of Law No. 17.164, an invention will be
considered new if it is not included in the state of the art. The second paragraph stipulates that the
state of the art shall be held to comprise the sum of the technical knowledge made available to thepublic prior to the date of filing of the patent application or, where applicable, the recognized priority,
by oral or written description, by use or by any other method of dissemination or communication of
information, in Uruguay or abroad, in such a way that the invention can be made. Under the third
paragraph, the content of an application being processed in Uruguay whose date of filing or, where
applicable, priority is earlier than the date of the application being examined will also be held to form
part of the state of the art, provided that the cont ent was included in the prior application when it was
published.
An invention is regarded as involving an invent ive step when it does not result from the state
of the art in a manner obvious to a person skilled in the art (Article 11).
An invention is regarded as capable of industrial application when its subject-matter  can be
used in industry, defined in the broadest sense.
25. Please explain whether or not in your legislat ion, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions a re provided for, please describe in detail how
these exclusions are applied in legal as well as practical terms.
Article 39 of the Patent Law stipulates that the rights conferred by patents shall not extend to
the following:  acts carried out in private for non-industrial or non-commercial purposes, provided
that they do not cause economic prejudice to the owner of the patent (subparagraph (a));  the
preparation of a medicine for a single patient, according to a medical prescription and under thesupervision of an authorized professional (subparagraph (b));  acts carried out solely for experimental
purposes, including acts anticipating future commercial exploitation carried out during the year prior
to the expiry of the patent (subparagraph (c));  acts carried out for teaching, scientific or academic
research purposes (subparagraph (d));  the importation of small quantities of goods of a non-
commercial nature contained in the personal effects of travellers or sent in small packages(subparagraph (e)). Accordingly, third parties may avail themselves of these uses without the
authorization of the patent owner.
According to Article 41 of the Patent Law, owners of patents may not prevent acts carried out,
even without disclosure, by third parties who, in g ood faith, on the date of filing of the application or
priority, where applicable, were already manufacturing the product or using the process that forms the
subject-matter  of the invention in Uruguay, or had made serious preparations to manufacture, use or
work it. Such acts may be continued only to meet the needs of the exploiting enterprise and the right
is not transferable without the exploiting enterprise.IP/C/W/330
Page 11
In accordance with the Constitution and other special laws, Articles 42 and 43 of the Patent
Law provide for inventions made in authorized monopolies belonging to the State or to private
individuals to be patentable. However, they may be industrially or commercially worked only with the
agreement of the holder of the monopoly or after the monopoly has expired. Like any property right,in accordance with the Constitution, patent rights may be expropriated by the State. This requires a
special law and the owner must be granted appropriate compensation under a judicial procedure with
every guarantee.
According to the information available, there have been no instances of these rules having
been applied in practice.
26. Please explain whether your legislation prov ides for the exclusion of inventions from
patentability based on public order or morality.  If so, please explain the relevant section of
your legislation and explain its formulation.  Please also explain if it has been applied in
practice.
Under Article 14(b) of  Patent Law No. 17.164 of 2 September 1999, in accordance with
Article 27.2 of the TRIPS Agreement, inventions contrary to public order, morality, public health, the
national food supply, security or the environment are not patentable.
There are no instances of this provision having been applied in practice.
27. Please explain whether or not diagnostic, therapeutic and surgical methods are excluded
from patentability in your legislation. If so, please explain the relevant section of your legislation
and explain its formulation.
In accordance with Article 27.3(a) of the TRIPS Agreement, diagnostic, therapeutic and
surgical methods for the treatment of humans or animals are excluded from patentability by
Article 14(a).
28. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation. If so, please explain the relevant section of your
legislation and explain its formulation.
In accordance with Article 27.3(b) of the TRIPS Agreement, Article 13(b) of the Patent Law
establishes that plants and animals, other than micro-organisms, and essentially biological processes
for the production of plants or animals, other than  non-biological and microbiological processes, are
not to be considered inventions for the purposes of the Law. Under subparagraph (g) of Article 13,biological or genetic material existing in nature  is likewise not considered to be an invention.
From this it clearly follows that micro-organisms and non-essentially biological processes are
patentable under the legislation.
Plant varieties are protected by special legislation based on the standards of the UPOV
Convention, to which Uruguay is party. The 1978 version of this Convention was approved by Law
No. 16.580 of 21 September 1994. Moreover, Law No. 16.811 of 21 February 1997 contains the
national legislation on the protection of cultivars.  Thus, Uruguay possesses an effective sui generis
system for the protection of plant varieties.
29. Please describe how micro-organisms, non-essentially biological processes,
microbiological processes and plant varieties are protected in your legislation. Please explain, in
this respect, the relevant sections of your legislation.IP/C/W/330
Page 12
See reply to Question 28.
30. Please explain how your legislation protects  patent right holders against the importing
and against the offering for sale of a patented invention.
Under Article 34 of the Law, in accordance with Article 28 of the TRIPS Agreement, patents
confer on their owners the right to prevent third parties not having the owner’s consent from any of
the following acts:  (a) where the patent has been granted for a product:  from making, offering for
sale, selling or using the product, or importing or stocking it for any of these purposes;  (b) where the
patent has been granted for a process:  from using the process and from any of the acts cited in
subparagraph (a) in respect of products obtained by the said process.
31. Please state if your legislation provides for patent product protection of pharmaceutical
and agricultural chemical products.  In the a ffirmative, please indicate the legal reference.
Article 8 of the Law states that inventions of new products or processes which involve an
inventive step and are capable of industrial application are patentable. In its turn, Article 127 statesthat inventions of pharmaceutical and agricultural chemical products may not be patented until
1 November 2001.
That is to say that Uruguay, which under Article 3(c) of its former patent legislation (Law
No. 10.089 of 12 December 1941) excluded these sectors from patentability, has made use of a shorterperiod than that provided for in Article 65.4 of the TRIPS Agreement for extending patent protection
to these products.
32. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.
As follows from the reply to Question 30, under Article 34(b) of the Patent Law, the
protection granted for a process patent covers products obtained by that process.
33. Please explain the additional conditions, if any, in your legislation other than the
sufficient disclosure of the invention in Articl e 29 of the TRIPS Agreement (e.g. submission of
justification for access to genetic material or prior inform consent to its use).  If such additionalconditions exist, please point out the relevant le gislation and describe the additional conditions
in detail.
Neither Patent Law No. 17.164 nor any other legi slation imposes additional conditions of the
kind mentioned, other than those of Article 29 of the TRIPS Agreement on the complete disclosure ofthe invention and information concerning the applicant’s other applications and grants (Articles 22, 25
and 32 of the Law).
34. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
According to Article 39 of the Patent Law, the rights conferred by patents do not cover the
following acts:  acts carried out in private fo r non-industrial or non-commercial purposes, provided
that they do not cause economic prejudice to the owner of the patent (subparagraph (a));  the
preparation of medicine for a single patient, according to a medical prescription and under thesupervision of an authorized professional (subparagraph (b));  acts carried out solely for experimental
purposes, including acts anticipating future commercial exploitation, carried out during the year prior
to the expiry of the patent (subparagraph (c));  acts carried out for teaching, scientific or academic
research purposes (subparagraph (d));  the importation of small quantities of goods of a non-
commercial nature contained in the personal effects of travellers or sent in small packagesIP/C/W/330
Page 13
(subparagraph (e)).  Consequently, third parties may make these uses without the authorization of the
patent owner.
Article 41 of the Patent Law states that owners of patent's may not prevent acts carried out,
even without disclosure, by third parties who, in g ood faith, on the date of filing of the application or
priority, where applicable, were already manufacturing the product or using the process that is the
subject-matter of the invention in Uruguay, or had made serious preparations to manufacture, use or
work it. Such acts may be continued only to meet the needs of the exploiting enterprise and the right
is not transferable without the exploiting enterprise.
In accordance with the Constitution and other special laws, Articles 42 and 43 of the Patent
Law provide for inventions made in authorized monopolies belonging to the State or to privateindividuals to be patentable. However, they may be industrially or commercially worked only with the
agreement of the holder of the monopoly or after the monopoly has expired. Like any property right,
in accordance with the Constitution, patent rights may be expropriated by the State. This requires a
special law and the owner must be granted appropriate compensation under a judicial procedure with
every guarantee.
35. Please explain whether or not your legislatio n provides for compulsory licensing. If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national le gislation considers individual merits in the
authorization of such use.
Articles 54 to 80 of the Patent Law (PL) authorize the granting of compulsory licences for
various reasons:  non-exploitation (Article 54), publ ic interest (Articles 55 to 59), anti-competitive
practices (Articles 60 to 63), unjustified refusal of a contractual licence (Articles 64 to 68), and
dependent patents (Articles 69 and 70).  The Law also contains a Chapter on general provisions andprocedures (Articles 71 to 80) relating to compulso ry licences.  These articles lay down conditions for
the granting of compulsory licences in accordance with Article 31 of the TRIPS Agreement.
Below, the corresponding provisions of the Patent Law are described in detail in the order of
the paragraphs of Article 31 of the TRIPS Agreement:
(a) The circumstances and requirements for the granting of licences for non-exploitation,
reasons of public interest, anti-competitive practices, unjustified refusal of a
contractual licence, and dependent patents are defined in Articles 54, 55, 60 and 61,
64, and 69 and 70, respectively.
(b) Article 71 of the Patent Law lays down the requirements that persons wishing to
obtain a compulsory licence must meet.  Thus, they must have:  requested a
contractual licence from the owner of the patent and been unable to obtain it on fair
commercial terms customary in Uruguay, within 90 days following the request.
Under the second paragraph of Article 71, this requirement may be waived in
situations of national emergency, extreme urgency, or in cases of non-commercialpublic use and anti-competitive practices.
(c) From the provisions of Article 77 of the Patent Law, subparagraphs (a) and (c), as
well as from the provisions cited in (a) above and those relating to the various types
of compulsory licences (for example, Article 58 concerning public interest) it clearlyfollows that their scope and duration are limited to the purpose for which they were
granted.
(d) Article 73 (a) of the Patent Law clearly establishes that compulsory licences may not
be exclusive.IP/C/W/330
Page 14
(e) According to Article 73(d) of the PL, a compulsory licence may not be assigned
without that part of the enterprise or goodwill which exploits the subject-matter of the
licence.
(f) Article 56 of the PL establishes that in the case of compulsory licences for reasons of
public interest, the supply will be exclusively to meet the needs of the domestic
market.
(g) Under Article 59 of the PL, uses granted under a compulsory licence may be
withdrawn, subject to appropriate protection of the legitimate interests of the persons
who have received the authorization, if the circumstances which gave rise to theauthorization have ceased to exist and are unlikely to recur.  The competent
authorities are empowered to examine whether such circumstances still exist, on
receiving a substantiated request.
(h) Article 77(b) establishes that, in general, the licensor will be remunerated and that the
amount of remuneration will be fixed according to the circumstances specific to each
case, taking into account the economic value of the exploitation of the licensed
invention, as well as other factors such as average royalties for the sector under
commercial licensing agreements.
(i) The resolutions granting compulsory licences are issued by the National Industrial
Property Directorate (NIPD) or by the Executive Power, in the case of licences for
reasons of public interest.  Both resolutions may be reviewed, upon application for
reconsideration or appeal to a higher administrative authority in the case of the NIPD,
an agency subordinate to the Executive Power. After that, under the Constitution andspecial laws, any final State resolution may be set aside by the Administrative
Tribunal, a specialized five-member quasi-judicial body.
(j) According to Article 74 of the PL, if the parties are unable to agree on the appropriate
remuneration or the other conditions for the granting of a compulsory licence, an
arbitral tribunal shall be appointed to decide the matter. Its decision will be adopted
by a resolution of the NIPD (Article 75) granting the licence. Consequently, as thefixing of the remuneration forms part of the NIPD decision granting the licence, it can
be reviewed in the same way as the latter, i.e. by recourse to the appropriate
administrative remedies and then by an action to set aside before the Administrative
Tribunal, as described in the preceding paragraph.
(k) The second paragraph of Article 71 states that in the case of compulsory licences for
anti-competitive practices (Articles 60 to 63 of the PL), the interested party, the
potential user, may disregard the requirements imposed by the first paragraph in other
cases.
(i) According to Article 60 of the PL, a compulsory licence may be granted for
anti-competitive practices if the competent authority, following
administrative or judicial procedures that confer on the patent owner the right
to a fair hearing and other guarantees, has previously determined that the
owner has been involved in practices deemed anti-competitive or has abusedthe rights conferred by the patent or a dominant market position.
(ii) Although the PL does not specifically provide for the correction of anti-
competitive practices as a factor to be taken into account in fixing the amount
of remuneration, inasmuch as the Law grants the competent authoritiesIP/C/W/330
Page 15
powers to determine that amount and to refuse to withdraw the authorization
if the circumstances which gave rise to it are likely to recur, it is clear from
the provisions as a whole that the authorities must take this factor into
account. Thus, for example, Article 62 of the PL states that if the owner of
the patent continues the acts or practices that led to the determination of anti-competitive practices or abuse of the rights conferred by the patent, the right
to the patent may be cancelled, either ex officio or at the request of an
interested party, subject to a prescribed period of notice.
(l) As already mentioned, Articles 69 and 70 of the PL deal with the subject of
“dependent patents”. According to Article 69, if a patented invention or utility model
cannot be exploited without infringing an earlier patent, the owner or a licensee mayrequest the grant of a compulsory licence in respect of the other patent, insofar as it is
necessary to work the patent and avoid infringement. Article 70 lays down the
conditions for the granting of this type of compulsory licence, namely:  the invention
claimed in the second patent must involve an important technical advance of
considerable economic significance in relation to the invention claimed in the firstpatent (subparagraph (a));  the owner of the first patent must be entitled to obtain a
cross licence on reasonable terms to use the invention claimed in the second patent
(subparagraph (b));  and assignment of the authorized use of the first patent must
include use of the second patent (subparagraph (c)).
The other requirements of Article 31 of the TRIPS Agreement concerning notification of the
patent holder as soon as reasonably practical when compulsory licences are granted in situations of
national emergency (subparagraph (b));  the informing of the right holder in cases of public non-
commercial use;  the restriction of compulsory licences for semi-conductor technology to cases of
public non-commercial use or the remedying of anti-competitive practices (subparagraph (c));  and, inpart, use predominantly for the supply of the domestic market are not specifically provided for in the
PL. However, they are mandatory by application of the general principles laid down in the legislation,
such as those requiring that the patent holder be notified or informed, or because the provisions of the
TRIPS Agreement itself so require, since, as has repeatedly been pointed out, these provisions have
been incorporated into the national legislation and form part of domestic law, for example Law
No. 16.671 of 13 December 1994 on semi-conductor technology.
As regards the conditions that must be met by the licensee, Article 72 stipulates that, in
general, anyone seeking a compulsory licence or other unauthorized uses must possess the technical
and economic capacity and the infrastructure needed to start exploiting the invention.
36. Please explain how your legislation explicitly ensures that a proposed user has made
efforts to obtain authorization from the righ t holder on reasonable commercial terms and
conditions and that such efforts have not been successful within a reasonable period of time. In
this context, how do you define "reasonable period of time".  Please also explain how your
legislation ensures that the use of a compulsory  licence shall be author ized predominantly for
the supply to the domestic market of the Member authorizing such use.
As indicated in the reply to the previous question, Article 71, in accordance with Article 31 of
the TRIPS Agreement, states that persons wishing to obtain a compulsory licence or other uses must
provide evidence that they have requested a contractual licence from the owner of the patent and have
been unable to obtain one on fair commercial terms customary in Uruguay within 90 days of makingthe request. This requirement may be waived in situations of national emergency or in cases of public
non-commercial use and anti-competitive practices.
Although the requirement of Article 31(f) of the TRIPS Agreement that compulsory licences
and other uses be granted predominantly for the supply of the domestic market is not specificallyIP/C/W/330
Page 16
mentioned in the Law, as also noted in the reply to the previous question, it forms part of the national
legislation as a result of the incorporation of the provisions of the Agreement into domestic law. At
the same time, the very nature of the conditions  and requirements laid down in the Law for the
granting of compulsory licences presupposes that its main purpose is to supply the domestic market,
except in the case of licences for remedying anti-competitive practices under Article 31(k).
37. Please state if your legislation grants addi tional protection for innovations after the
20 years of patent protection has lapsed.
In accordance with Article 33 of the TRIPS Agreement, Article 21 of the Law states that the
term of protection for patents for inventions shall be 20 years as from the application filing date, while
making no provision for extensions.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
In accordance with Article 34 of the TRIPS Agreement, Article 101 of the PL establishes that in civil
proceedings if the subject-matter of the patent is a process for obtaining a product, the judicial
authorities shall have the authority to order the de fendant to prove that the process to obtain the
product is different from the patented process, provided that the product is new.
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects topographies.
As repeatedly noted, Uruguay’s ratification of the TRIPS Agreement incorporated its
provisions, and in particular Articles 35 to 38 concerning integrated circuits, into domestic law.
Thus, the reference in Article 35 of the TRIPS Agreement to Articles 2 through 7 (other than
paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectual
Property in Respect of Integrated Circuits incorporates these provisions into domestic law also,
making them mandatory. Therefore, without prejudice to the possibility of their direct individual
application, they constitute a positive source of integration and interpretation additional to the specific
rules of the legislation on patents, industrial designs, copyright and unfair competition adopted to
protect layout-designs of integrated circuits, accord ing to the circumstances, or prevent acts of unfair
competition that might affect their creators.
In accordance with the above and Article 4 of the Integrated Circuits Treaty, layout-designs
that meet the corresponding requirements for acquisition of each type of right may acquire protection
through patents, industrial designs or copyright, or through the rules on unfair competition.
40. Please explain what protection your national  legislation grants to right holders against
the unlawful importation, sale or distribution for commercial purposes of topographies
including integrated circuits or other articl es in which a topography is incorporated in
accordance with Article 36 of the TRIPS Agreement.
The protection provided for patents and industrial designs and for copyright, together with the
general provisions of civil and procedural law, by application of the general principles or the rules on
unfair competition, confer on the right holder and creator of the layout-design civil remedies and
provisional measures for protecting his right.
The type of protection for layout-designs of integrated circuits will depend on the type of
intellectual property right to whose protection they can lay claim:  patents, industrial designs orIP/C/W/330
Page 17
copyright, or may take the form of actions to protect the designer of the circuit from unfair
competition or, in general, from any unlawful acts of a third party that cause him injury.
41. Please explain how your legislation provi des for the derogation from Article 36 as
specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonablegrounds to know when acquiring an integrated circuit or an article incorporating such an
integrated circuit that it contains an unlawful topography.
As already pointed out, the provisions of Articles 36 and 37 of the TRIPS Agreement form
part of Uruguay’s domestic law.
42. Please state the term of protection granted by your legislation to topographies.
In accordance with the reply to Question 40, the term of protection for layout-designs of integrated
circuits will depend on the type of intellectual property right to whose protection they can lay claim:
patents, industrial designs or copyright. However, this term will always be greater than the minimum
of 10 years specified in Article 38 of the TRIPS Agreement.
H.
PROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information. If so, please give the time span.
Like the other provisions of the TRIPS Agreement, the provisions of the Paris Convention
(Stockholm Act of 14 July 1967), and in particular those of its Article 10 bis on unfair competition,
have been incorporated into Uruguay’s domestic law, following ratification by Decree-Law
No. 14.910 of 10 July 1979.
Consequently, by application of these provisions and, moreover, the general rules and
principles of civil law, persons who have lawfully within their control information that fulfils the
requirements of Article 39.2 of the TRIPS Agreement may prevent it from being disclosed to,
acquired by, or used by others in a manner contrary to honest commercial practices.
With regard to undisclosed test or other data submitted to the competent authority as a
condition of approval of the marketing of pharmaceutical or agricultural chemical products, providedthey meet the requirements of Article 39.3 of the TRIPS Agreement, they will be protected against
unfair commercial use. Moreover, Article 197 of Law No. 17.296 stipulates that officials of the
Ministry of Livestock, Agriculture and Fisheries who obtain information in the course of their
inspection activities must keep that information secret and preserve the confidentiality of any
administrative or judicial proceedings of which they have knowledge.
At the same time, Article 6 of Executive Decree No. 324/999 of 12 October 1999 on the
approval of the marketing of pharmaceutical produc ts states that the applicant must declare the
undisclosed nature of information provided for the purpose of obtaining authorization.
44. Please explain how your legislation defines "undisclosed information".
See reply to Question 43.
45. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
See reply to Question 43.IP/C/W/330
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I. ENFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
Copyright and related rights
Firstly, Article 46 of Copyright Law No. 9.7 39, as amended by Article 23 of Law No. 15.913
of 17 November 1987, stipulates that:  “Whoever publishes, sells, reproduces or causes to be
reproduced by any means, in whole or in part, an  unpublished or published work without the written
authorization of its author or his successor in title or its purchaser, in whatever capacity, or attributes
it to a different author, thereby contravening the provisions of this Law, shall be liable to a term of
from 3 months to 3 years imprisonment.”
Secondly, Law No. 15.289 of 14 July 1982 introduced a new criminal offence with a view to
protecting producers of phonograms and/or videograms from unauthorized reproductions.
According to Article 1, “Anyone reproducing a phonogram or videogram for gain and without
the written authorization of its producer, and anyone distributing to the public or stocking for that
purpose the reproductions thus obtained, shall be liable to the penalty laid down in Article 46 of Law
No. 9.739 of 17 December 1937. The same penalty shall be applicable to anyone fixing the live
performance of a literary or artistic work by whatever means, clearly for the purpose indicated in the
previous sentence and without the written authorizati on of the author and the performer, as well as to
anyone distributing to the public or stocking for that purpose the versions thus obtained.”
Article 47 of Copyright Law No. 9.739 of 17 December 1937, as amended by Article 328 of
Law No. 16.170 of 27 December 1987, stipulates that:  “The unlawfully reproduced copies and any
materials used for reproduction, communication or public performance shall be seized.
As a preparatory measure, the interested party may apply for their attachment while
requesting the competent court for exemption fr om counter-security, where there is good cause.
In any event, the judgement shall order the destruction or rendering unusable of the copies
and materials seized, if they are capable of being used, to the extent necessary to prevent unlawful
exploitation.
Copies acquired by third parties in good faith for their personal use shall not be destroyed.”
Industrial property
There are expeditious administrative and judicial remedies to deter any infringement.From the administrative standpoint, bot h Trademark Law No. 17.011 and its Regulatory
Decree No. 34/99 and Patent Law No. 17.164 and its Regulatory Decree No. 11/00 provide for special
administrative procedures based on the latest standards.
From the judicial standpoint, Laws Nos 17.011 and 17.164, Articles 81 to 85 and 106 and
107, respectively, establish offences and penalties for infringers of industrial property rights, namely,
trademarks and appellations of origin, in the first instance, and patents, utility models and industrial
designs, in the second.
Likewise, Articles 87 and 88 of Law No. 17.011  and 99 to 105 of Law No. 17.164 provide for
civil proceedings for infringements of the trademark and patent regulations.IP/C/W/330
Page 19
All these procedures, both administrative and judicial, whether civil or criminal, are based on
the constitutional principle of due process. The administrative procedures are laid down in special
laws and decrees such as Decree No. 500/91, which applies to the Uruguayan public service in
general. Civil proceedings are governed by the General Code of Procedure and criminal proceedings
by the Code of Criminal Procedure.
47. Please explain whether or not your legislation provides for a mechanism to appeal to
judicial bodies of final administrative decisions.
Copyright and related rights
Under both judicial and administrative procedures there are mechanisms for appealing
decisions of the bodies concerned.
Industrial property
Where administrative decisions are concerned, they may be reviewed by a specialized five-
member quasi-judicial body (Administrative Tribunal).
48. Please describe how your legislation authorizes judges to order production of evidence
by the opposing party.  Please give precise information on what measures are taken to ensure
the protection of confidential information.
Copyright and related rights
This judicial authority may be regarded as covered by the general and particular rules of
procedure.
Thus, Article 168 of the General Code of Pr ocedure (Law No. 15.982 of 18 October 1988) on
documents within the control of the opposing party states:  “A party wishing to make use of a
document which it declares to be within the control of the opposing party may request the court to
order the latter to produce it within the period it shall determine.
If other evidence clearly shows the probable existence and content of the document, refusal to
produce it shall be regarded as acknowledgement of that content.”
In this respect, reference may also be made to Article 189 of the Code, entitled “Cooperation
in the taking of evidence”, paragraph 3 of which states:  “If one of the parties is required to cooperate
and unjustifiably refuses to do so, the court may order its cooperation. If, despite that, it shouldcontinue in its recalcitrance, the court may order that the formalities be waived and the refusal to
cooperate interpreted in the evidence as confirmation of the accuracy of the statements of the
opposing party with regard to the fact it is desired to prove, in the absence of proof to the contrary.”
Industrial property
Article 168 of the GCP allows the plaintiff to request that the opposing party be ordered to
produce documentation within his control which the plaintiff wishes to use. Refusal may be regarded
as acknowledgement of content. As regards the identification and protection of confidential
information, if the party required to provide it can justify its request for confidentiality, the court maytake the steps necessary to protect it. Likewise, the law makes express provision for its protection in
criminal inquiry proceedings under the CCP and in the confidential precautionary measures provided
for under the GCP, etc.IP/C/W/330
Page 20
49. Please quote provisions of your legislation that authorize judges to order a defendant to
desist from an infringement.
Copyright and related rights
The copyright law contains no specific provision for suspending the infringing activity or
prohibiting its resumption. There is such a provision in the draft law approved by the Chamber of
Representatives and now before the Senate (Article 139).
Nevertheless, it is considered that, on the basis of the General Code of Procedure, measures of
this type could be taken as precautionary measures or during proceedings.
Industrial property
Article 87 of Trademark Law No. 17.011 and Articles 99, 100 and 102 of Patent Law
No. 17.164 authorize the ordinary courts to order infr ingers of industrial property rights to pay
damages where there is fault or fraud.  The payment of costs and charges may be ordered only incases of bad faith or culpable negligence.  Articles 1.319, 1.323 and 1.324 of the Civil Code provide,
in general, for liability and the payment of damages in cases of fault or fraud.
50. Please quote what provisions of your legislation authorize judges to order the payment
to the right holder of adequate damages to compensate the injury he suffered.
Copyright and related rights
Article 51 of Law No. 9.739 provides for civil proceedings for damages and for the
imposition on infringers of a civil penalty consisting of the profits or income improperly received.Thus, in accordance with the Law in force, as reflected in Uruguayan legal theory and precedents,
infringers are liable not only for damages (consequential damages and loss of income) but also for all
profits or income improperly received as a result of the unlawful exploitation of the work.
Industrial property
See reply to Question 49.
51. Please quote what provisions of your legisl ation authorize judges to order the payment
of the right holder's expenses by the infringer.
Copyright and related rights
This matter is governed by the general provisions of the Code of Civil Procedure (Articles 56
et seq. )
Article 56 of the Code, on orders in final judgements, states that the latter shall order the
payment of costs and charges or not make any special order, as appropriate, in accordance with the
provisions of Article 688 of the Civil Code. Costs are considered to include all taxes, including
payment of the vicesima , and the fees of experts, depositaries, valuers and other officers of the court.
Charges are considered to include attorneys’ fees.
Industrial property
An order to pay costs and charges may be made only in the event of bad faith or culpable
negligence.IP/C/W/330
Page 21
52. Please explain if and how judges have the authority to order that infringing goods are
placed outside channels of commerce or destroyed.
Copyright and related rights
Article 47 of Copyright Law No. 9.739 of 17 December 1937, as amended by Article 328 of
Law No. 16.170 of 27 December 1987, stipulates that:  “The unlawfully reproduced copies and any
materials used for reproduction, communication or public performance shall be seized.
As a preparatory measure, the interested party may apply for their attachment, while
requesting the competent court for exemption fr om counter-security, where there is good cause.
In any event, the judgement shall order the destruction or rendering unusable of the copies
and materials seized, if they are capable of being used, to the extent necessary to prevent unlawful
exploitation.
Copies acquired by third parties in good faith for their personal use shall not be destroyed.”
Industrial property
In cases of infringement, under Article 84 of Trademark Law No. 17.011 trademarks and the
implements used in making them will be destroyed or rendered unusable and infringing goods thathave been seized will be forfeited and destroyed, unless they can be awarded to public or private
charitable institutions. Article 106 of Patent Law No. 17.164 provides for the forfeiture of infringing
articles and the implements used in making them and their disposal in consultation with the NIPD.
53. Please quote what provisions of your legislation authorize judges to indemnify a
defendant in the event of abuse by the plaintiff.
Copyright and related rights
This situation would have to be studied in terms of the situations relating to abuse of rights or
abuse of process.
There is no specific provision for this in the Copyright Law.
Industrial property
This possibility is always available where injury can be shown to have resulted from the abuse
of process. Moreover, if reckless malice can be proved, the plaintiff may be ordered to pay the costs
and charges.
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.
Copyright and related rights
Article 50 may be regarded as a series of self-enforcing rules since it authorizes the judicial
authorities to order the provisional measures described therein.
Without prejudice to these provisions, it should be noted that Articles 306 et seq.  of the
General Code of Procedure also provide for a series of “preparatory measures” applicable to any
proceedings. Thus:IP/C/W/330
Page 22
“Any proceedings may, at the initiative of a party, include a preliminary phase for the purpose
of:
(1) determining or completing the active or passive legitimation of the parties to the
future proceedings;
(2) expediting the taking of evidence which might be lost if action were postponed to a
later stage;
(3) serving notices to establish default and obtaining elements needed for the proceedings
such as documents, accounts and the like;
(4) ordering precautionary measures or the provision of security in connection with the
subsequent proceedings.
Articles 311 et seq.  also establish precautionary measures.”
Industrial property
Article 50 of the TRIPS Agreement is implemented as follows:  with respect to Article 50.1,
Article 103 of Patent Law No. 17.164 provides for the adoption of provisional or precautionary
measures in accordance with the General Code of Procedure, Article 317 of which concernsprovisional measures, laying down the same procedure as for precautionary measures (Articles 311 to
316). For the preservation of evidence, in addition to these articles, Article 309.6 on preliminary
measures also applies. With respect to Article 50.2, Article 315 of the GCP provides for measures of
this type to be ordered without the knowledge or intervention of the other party. With respect to
Article 50.3, Articles 314.2 and 314.3 of the GCP require the production of prima facie  evidence and
the provision of counter-security and the adoption of the measure is decided as soon as the evidence
has been examined. With respect to Article 50.4, Article 315 of the GCP provides for notification of
the measure immediately upon execution, and both the person affected by the measure and the
applicant may appeal the decision. With respect to Article 50.5, the court may always request further
evidence of the right in order to facilitate its decision. This is a general procedural principle enshrined
in the GCP. With respect to Article 50.6, Ar ticle 311.2 of the GCP provides for precautionary
measures to lapse automatically if a complaint is not lodged within 30 days and for the applicant to beordered to pay all the costs of the proceedings and any damages. With respect to Article 50.7, as
already mentioned in connection with the previous ar ticle, compensation for injury is provided for in
Article 311.2 of the GCP. With respect to Article 50.8, provisional measures may be ordered under
administrative procedures, since Decree No. 500/91 on administrative procedures authorizes the
application of the GCP, wherever relevant.
55. Please identify the competent authorities in your jurisdiction who receive requests from
right holders for an application to suspend the release of counterfeit goods by the customs
authorities.
Copyright and related rights
Under the Uruguayan legal system, the party affected may request the courts to apply
precautionary measures where there is a possibility of counterfeit or unlawfully reproduced goods
entering the country.
The National Directorate of Customs has acted ex officio  in several proceedings relating to
unlawfully reproduced goods.IP/C/W/330
Page 23
As for the present Copyright Law, it does not contain any express provisions. The draft law,
approved with amendments in the Chamber of Representatives and currently being considered in the
Culture Committee of the Chamber of Senators, incorporates the following Article 137:
“Holders of intellectual property rights who have valid grounds for suspecting that attempts or
preparations are being made to import into the national territory goods which, in accordance
with the terms of the applicable legislation, have been manufactured, distributed or imported,
or are intended for distribution, without the authorization of the holder of the intellectual
property right may request the competent customs or judicial authorities to order special
control measures in respect of those goods, their preventive attachment or the precautionary
suspension of the corresponding customs proced ure. Evidence justifying the suspicions must
be produced.
If the request is made to the National Directorate of Customs, the latter, having ordered the
precautionary measures requested, shall promptly notify the importer and the applicant. If
within 10 working days of notification of the right holder or his representative, no evidence of
initiation of the corresponding civil or criminal proceedings has been received, the preventivemeasures shall be revoked and the goods released, without prejudice to any liabilities that may
have been incurred by an applicant who has knowingly lodged an unfounded complaint.”
Industrial property
The customs courts.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
Copyright and related rights
Under the Uruguayan legal system, the party affected may request the courts to apply
precautionary measures where there is a possibility of counterfeit or unlawfully reproduced goods
being exported
Industrial property
There are no such procedures.
57. Please indicate whether or not your legislation provides for a de minimis  imports
exception.
Copyright and related rights
This provision has not been implemented.
Industrial property
There are no such procedures.
58. Please explain how your legislation implements Article 61 of the TRIPS Agreement.
Copyright and related rights
In the criminal law there are two provisions relating to copyright and related rights.IP/C/W/330
Page 24
Firstly, Article 46 of Law No. 9.739, the Copyri ght Law, as amended by Article 23 of Law
No. 15.913 of 17 November 1987, stipulates that:  “Whoever publishes, sells, reproduces or causes to
be reproduced by any means, in whole or in part, an unpublished or published work without the
written authorization of its author or his successor in title or its purchaser, in whatever capacity, or
attributes it to a different author, thereby contravening the provisions of this Law, shall be liable to aterm of from 3 months to 3 years imprisonment.”
Secondly, Law No. 15.289 of 14 July 1982 introduced a new criminal offence with a view to
protecting producers of phonograms and/or videograms from unauthorized reproductions.
According to Article 1, “Anyone reproducing a phonogram or videogram for gain and without
the written authorization of its producer, and anyone distributing to the public or stocking for thatpurpose the reproductions thus obtained, shall be liable to the penalty laid down in Article 46 of Law
No. 9.739 of 17 December 1937. The same penalty shall be applicable to anyone fixing the live
performance of a literary or artistic work by whatever means, clearly for the purpose indicated in the
previous sentence and without the written authorizati on of the author and the performer, as well as to
anyone distributing to the public or stocking for that purpose the versions thus obtained.”
Complaints for infringement of copyright may be prosecuted ex officio  or through public right
of action.
At the same time, it should be pointed out that a draft law establishing a new regulatory
framework for copyright has been approved by the Chamber of Representatives and is currently being
considered in the Chamber of Senators. Article 146 of the draft law establishes a new criminal offence
characterized as follows:  “Whoever, without the authorization of their author or respective owner
protected by this Law, introduces works, performances, phonograms or broadcasts into a data storage
system for the purpose of reproducing or distributing them shall be liable to imprisonment for 3 to24 months.”
Industrial property
Article 61 of the TRIPS Agreement is implemented as follows:Articles 81 to 83 of Trademark Law No. 17.011 establish offences and penalties relating to
trademarks. There is also provision for the forfeiture and destruction of goods (Article 84) and the
protection is extended to appellations of origin (Article 85).
Articles 106 and 107 of Patent Law No. 17.164 establish offences and penalties relating to
patents, characterizing them as follows:
Article 106 provides for a term of 6 months to 3 years imprisonment for anyone who infringes
any of the rights protected by patents. It also provides for the forfeiture of the infringing products and
the implements used in making them.
Article 107 increases the term of imprisonment to 15 months to 4 years in the following
aggravating circumstances:  (a) where the infringer was an employee of the patent owner or a licensee
and (b) where he obtained from the latter knowledge of the special methods of making the patented
product.IP/C/W/330
Page 25
UNITED STATES
A. GENERAL PROVISIONS
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which national treatment and
most favoured nation treatment are provided to nationals of other WTO Members.
By Law No. 16.671 of 17 December 1995 Uruguay ratified the TRIPS Agreement, thereby
incorporating its provisions into the national legislation to form part of its domestic law.
Consequently, Articles 3 and 4 of the Agreement concerning national treatment and most-favoured-
nation treatment apply in Uruguay.
Earlier, moreover, by Decree-Law No. 14.910 of 10 July 1979, Uruguay had ratified the Paris
Convention for the Protection of Industrial Property (Stockholm Act 1967). Article 2 of this
Convention also incorporates the principle of national treatment for nationals of Paris Union
countries.
Thus, these rules are generally applicable to all the intellectual property subject-matter
covered by the treaties in question.
Furthermore, the specific national legislation relating to each different type of rights makes no
distinction between nationals and foreigners.
With regard to the principle of most-favoured-nation treatment, Uruguay applies it in
accordance with the scope of Articles 4 and 5 of the Agreement  and the exceptions contained therein.
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain whether and how the copyrigh t law of Uruguay complies with Article 9 of
the TRIPS Agreement requiring that Members co mply with all Articles 1 through 21 of the
Berne Convention (1971), except Article 6bis, since Members do not have rights or obligations
relating to the latter Article under the TRIPS Agreement.
Uruguay approved the Berne Convention by Law No. 14.910 of 19 July 1979.
There have been judicial decisions relating to its application in Uruguay.At the same time, Uruguayan copyright law provides broad protection for authors, granting
them exclusive rights in various modes of exploitation of their works (Law No. 9.739 of
17 December 1937).
The application of the Berne Convention entails the automatic application of its provisions
such as, among others, derogation from the compulsory registration requirement of the 1937 Law, the
extension of the period of post mortem  protection to 50 years, the presumption of authorship, and the
broad concept of communication to the public. The Berne Convention and the national legislation
have coexisted peacefully and harmoniously, as expressly reflected in repeated decisions by thecourts.
3. Please explain how the copyright law of Uruguay protects computer programs as
literary works and compilations of data as required by Article 10 of the TRIPS Agreement.
By Law No. 16.671, Uruguay approved the agreements resulting from the GATT Uruguay
Round, including, in particular, the so-called TRIPS Agreement on intellectual property.IP/C/W/330
Page 26
In view of the text of Article 10 of the TRIPS Agreement, there can be no doubt that
computer programs and compilations of data are protected as “literary works”, i.e., under the relevant
provisions of the law on literary and artistic property (Copyright Law No. 9.739).
The Uruguayan Government, legal theory and the case-law have long accorded protection to
computer programs under the copyright legislation.
The first statutory recognition of computer programs under the copyright law came with
Decree No. 154/989 of 11 April 1989. This Decree amended the article of the regulatory decree
establishing the procedure for registering programs.
Thus, Article 19 reads:  “In order to register photographs … and computer programs two
copies thereof shall be deposited. Copies of computer programs may be deposited in their entirety or
in parts sufficient to characterize the creation of the program. Information provided in support of the
registration of computer programs shall be confidential and may not be disclosed except for
examination by the Copyright Council, at the request of the owner himself or by court order.”
A very important ruling was that made by the Administrative Tribunal according computer
programs the status of products of the intellect, thereby assuring them of protection under the
copyright legislation (as literary and artistic property).
Under the criminal law, there have been several proceedings and convictions under the
copyright legislation. Likewise in civil matters, the provisions of the Copyright Law and the Berne
Convention concerning the awarding of damages, together with income and profits improperly
received by the infringers, have been applied.
4. Article 11 of the TRIPS Agreement requires that rental rights for computer programs
and cinematographic works be available.  Please  cite to the corresponding provision of the
copyright law of Uruguay.
There is no express provision for this right in the national legislation.
However, it is incorporated in the draft law ap proved by the Chamber of Representatives and
currently being considered in the Senate.
The rental right is included within the notion of public distribution and has been established in
favour of authors in general and producers of phonograms.
5. Please state the length and terms of protection the copyright law of Uruguay provides
for a work other than a photographic work or a work of applied art and cite to the relevant
provision of law.
According to Article 14 of the Copyright Law, the general length of protection for a work is
the lifetime of the author plus 40 years after his death.
Since the legislative approval of the Berne Convention (Law No. 14.910 of 1979), it has been
generally understood that the length of protection has been extended to 50 years after death by
application of the provisions of that Convention. That is to say, a tacit derogation from Law No. 9.739(Copyright Law) has been accepted in this as in other respects.
The draft law approved by the Chamber of Representatives and currently being considered in
the Senate increases the term of protection to 50 years.IP/C/W/330
Page 27
6. Please describe the protection the copyright law of Uruguay provides for performers,
and the term of the protection.
Performers enjoy the rights laid down in th e 1937 Copyright Law. Basically, these rights
comprise:  the right to require payment for thei r performance when broadcast or retransmitted by
radio or television or recorded or impressed on a disk, film, tape, wire or any other material or
medium suitable for audio or visual reproduction. If no agreement can be reached, the amount of the
payment shall be established in summary proceedings by the competent judicial authority (Article 36).
The performer of a literary or musical work may object to the disclosure of his performance if it is
reproduced in such a way as to seriously or unfairly injure his artistic interests (Article 37).
Moreover, by Law No. 14.587 of 19 October 1976, Uruguay approved the Rome Convention,
thereby according the consequential rights to the holders described therein.
It should be noted that Law No. 15.289 of 14 July 1982 created a category of criminal offence
that protects producers of phonograms and/or videograms from unauthorized reproductions and
includes protection for performers.
According to Article 1, “Anyone reproducing a phonogram or videogram for gain and without
the written authorization of its producer, and anyone distributing to the public or stocking for that
purpose the reproductions thus obtained, shall be liable to the penalty laid down in Article 46 of Law
No. 9.739 of 17 December 1937. The same penalty shall be applicable to anyone fixing the liveperformance of a literary or artistic work by an y means, clearly for the purpose indicated in the
previous sentence and without the written authorizati on of the author or artist, as well as to anyone
distributing to the public or stocking for that purpose the versions thus obtained.”
As regards the term of protection, the only point of reference is the periods granted by the
Rome Convention.
In the government bill approved by the Chamber of Representatives and currently being
considered in the Senate, the term of protection is fixed at 50 years.
7. Article 14.2 of the TRIPS Agreement provides that producers of phonograms are to
enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.
Article 14.2 requires that producers of phonograms are to have the right to authorize or
prohibit the commercial rental to the public of originals or copies of their phonograms.  Please
describe how the copyright law of Uruguay implements these obligations and indicate the term
of protection.
The right to authorize or prohibit the direct or indirect reproduction of their phonograms is
recognized as a result of the legislative approval of the Rome Convention.
As for the rental right, it is not expressly incorporated.  There has been a court case in which
it was ruled that the rental right is included in the right of distribution conferred by Article 1 of theabove-mentioned Law No. 15.289.
C. TRADEMARKS
8. Please describe the subject-matter that can comprise a trademark under the trademarklaw of Uruguay.
According to Article 1 of Law No. 17.011 of  25 September 1998 on trademarks and other
distinctive signs, “Trademark means any sign capable of distinguishing the goods or services of one
natural or legal person from those of other natural or legal persons.” Article 2 includes non-visibleIP/C/W/330
Page 28
signs, Article 3 advertising slogans, Articles 38 to 43 collective marks, and Articles 44 to 56
certification marks.
9. Please describe the procedure that must be followed to register a trademark in Uruguay,
citing the relevant provisions of the law, and de scribe the rights that the owner of a registered
mark can exercise.
The procedure for registering a trademark is laid down in Articles 29 to 37 of Law No. 17.011
and in Regulatory Decree No. 34/99.  The procedure consists in the filing of a form containing the
trademark application (which may be multi-class) accompanied by the necessary documents:  letter-
proxy in the event of registration through an Industrial Property Agent or formal power of attorney,
proof of payment of the prescribed fee, and the priority document, where applicable.  Once theapplication has been filed, it is assigned a number and subjected to an initial formal examination, a
period of 30 days being allowed for the production of any missing document.  This period may be
extended to 90 days where the priority document is concerned.  If it passes this examination, the
application is published in the Industrial Property Bulletin.  Within 30 days of publication third parties
may file any objections they consider relevant.  The NIPD then carries out a second formalexamination, allowing 10 days for the remedying of defects, and a substantive examination.  The
NIPD may oppose the application ex officio , either because of the existence of prior applications or on
any of the grounds for absolute nullity.  If there are no objections, the trademark will be granted.  If
there are objections from individuals or ex officio  or both, the applicant will be given a period of
30 days to rebut them.  Both parties have the right to produce evidence and the NIPD may, if itconsiders it necessary, also call for evidence.  Once the objections have been processed, the NIPD will
decide whether the trademark should be granted or refused.  Applications for reconsideration may be
filed and the decision may be appealed to the Executive Power as the superior authority, since the
NIPD is a devolved, hierarchically subordinate body.  Subsequently, the decision may be reviewed by
the Administrative Tribunal, a specialized five-member quasi-judicial body.  On the groundspermitted by the Law, third parties may also re quest the NIPD to cancel trademarks for absolute
nullity (Article 4), or where they reproduce well-known marks and trade names, or where the
registration was for purposes of unfair competition (Article 5, subparagraphs (6) and (7)).
The rights conferred by registration are specified in Articles 9 to 19 of Law No. 17.011.
Registration is formative since the right in the trademark is acquired once it has been registered,
which implies the presumption of lawful ownership (Article 9).  Ownership is acquired exclusivelywith respect to the goods or services included in the application (Article 11).  Moreover, the free
circulation of products bearing the trademark, lawfully placed on the market by the trademark owner
or with his authorization, may not be prevented (Article 12).  Likewise, registration bestows the right
to oppose the use or registration of any identical or  similar trademark by third parties (Article 14).
Ownership of a trademark may be inherited or assigned (Article 16).  The use of a trademark isoptional (Article 19).  The Law also authorizes trademark owners to institute proceedings in the courts
(civil and criminal) to prevent the continued use of their trademarks.
10. Please provide the length and terms of protection that the trademark law of Uruguay
provides for a trademark.
Protection is for 10 years renewable indefinitely (Article 18).
D. GEOGRAPHICAL INDICATIONS
11. Please describe in detail how the laws of Uruguay provide for the recognition and
protection of geographical indications required by Article 22.2 of the TRIPS Agreement, citing
to the relevant provisions of law or regulation, and provide examples of geographical
indications so protected.IP/C/W/330
Page 29
Law 17.011 prohibits the registration as a trademark of appellations of origin, indications of
source and any geographical name that is not sufficie ntly original and distinctive with regard to the
goods or services to which it is applied or whose use is liable to create confusion regarding the origin,
source, qualities or characteristics of the goods or services for which the mark is used (Article 4(4)).
Moreover, Chapter XII of the Law provides for special protection for geographical indications,stipulating that indications of source are to be protected without need for registration (Article 74) and
setting up a Register of Appellations of Origin (A rticle 76), while laying down the requirements for
their protection (Article 77).  Examples of the protection of geographical indications include the
cancellation of the trademark FRANCIA CORTA re quested for wines by a Uruguayan producer,
which is currently being applied for as an appellation of origin by grape and wine growers of the
Italian region.  The registration of FRONTIGNAC as a trademark, also applied for by a domestic
producer, was similarly blocked, having been opposed by the regulatory body for French appellationsof origin.
12. Please describe in detail the manner in which the higher level of protection required for
wines and spirits under Article 23.2 of the TRIPS Agreement is implemented, citing to the
relevant provisions of law or regulation, and provide examples of geographical indications forsuch products.
Article 23.2 of the TRIPS Agreement is covered by the protection afforded under the
provisions mentioned in the reply to Question 11.
E. INDUSTRIAL DESIGNS
13. Please describe the procedure that must be followed to obtain protection for industrial
designs, citing to the provisions of the law of Uruguay, and describe the nature of the protection
provided.
Articles 86 to 92 of the new Uruguayan La w No. 17.164 on patents, utility models and
industrial designs of 2 September 1999 provide for the protection of industrial designs.  The
provisions of the Law are supplemented by Articl es 29 to 33 of its Regulatory Decree No. 11/000 of
13 January 2000.
The procedure for granting an application for an i ndustrial design is as follows:  filing of the
application;  its publication within 12 months of the date of filing or priority, or earlier at the requestof the applicant; submission of comments by third parties within 30 days of publication;  the NIPD
may also submit comments at its discretion.  The applicant is allowed 30 days in which to rebut any
comments, whether submitted by third parties or ex officio , after which the resolution granting or
refusing the application is finally issued (Articles 92 to 96 of the Law and Articles 29 to 32 of the
Regulatory Decree).
Designs receive the protection accorded to patent s, provided they are original creations of an
ornamental nature incorporated in or applied to an industrial or craft product (Article 86).  The patent
right confers on its holder the right to prevent unauthorized persons from making, selling, offering for
sale, using, importing or stocking for commercial purposes products incorporating the protecteddesign (Article 88).
14. Please describe the procedure that must be followed to obtain protection for textile
designs and cite to the relevant provisions of law or regulation.
The Patent Law makes no special provision for the protection of textiles. However, because
of the time limits, the early publication option and the optional nature of the substantive examination
for compliance to be carried out by the NIPD the procedure laid down in the new Law makes it
possible to obtain protection promptly, in accordance with Article 25.2 of the TRIPS Agreement.IP/C/W/330
Page 30
At the same time, it should be borne in mind that, in accordance with Article 87 of Law
No. 17.164, the protection conferred on industrial designs under the Law does not exclude or affect
the protection that may be granted to the same design under other intellectual property protection
regimes, which would include the parallel protection of the same design by copyright, provided it metthe corresponding requirements, or by trademarks.
F. PATENTS
15. Please describe in detail the way in which the patent law of Uruguay implementsArticle 27 of the TRIPS Agreement, indicating  any exceptions provided for, and including
details regarding the protection for micro-organisms and non-biological and microbiological
processes and plant varieties.  Please cite to the relevant provisions of the law.
In accordance with Article 27.3(b) of the TRIPS Agreement, Article 13(b) of the Patent Law
establishes that plants and animals, other than micro-organisms, and essentially biological processes
for the production of plants or animals, other than  non-biological and microbiological processes, are
not to be considered inventions for the purposes of the Law. Under subparagraph (g) of Article 13,biological or genetic material existing in nature  is likewise not considered to be an invention.
16. Please describe in detail the rights provided patent holders under the patent law of
Uruguay and cite to the relevant provisions of law.
Under Article 34 of the Law, in accordance with Article 28 of the TRIPS Agreement, patents
confer on their owners the right to prevent third parties not having the owner’s consent from any of
the following acts:  (a) where the patent has been granted for a product:  from making, offering for
sale, selling or using the product, or importing or stocking it for any of these purposes;  (b) where the
patent has been granted for a process:  from using the process and from any of the acts cited insubparagraph (a) in respect of products obtained by the said process.
17. Please describe in detail any provisions in the laws of Uruguay permitting unauthorized
use of a patent, citing to the relevant provisions of law, and describe in detail the conditions
under which such use can occur.
Articles 54 to 80 of the Patent Law (PL) authorize the granting of compulsory licences for
various reasons:  non-exploitation (Article 54), publ ic interest (Articles 55 to 59), anti-competitive
practices (Articles 60 to 63), unjustified refusal of a contractual licence (Articles 64 to 68), and
dependent patents (Articles 69 and 70).  The Law also contains a Chapter on general provisions and
procedures (Articles 71 to 80) relating to compulso ry licences.  These articles lay down conditions for
the granting of compulsory licences in accordance with Article 31 of the TRIPS Agreement.
Below, the corresponding provisions of the Patent Law are described in detail in the order of
the paragraphs of Article 31 of the TRIPS Agreement:
(a) The circumstances and requirements for the granting of licences for non-exploitation,
reasons of public interest, anti-competitive practices, unjustified refusal of a
contractual licence, and dependent patents are defined in Articles 54, 55, 60 and 61,
64, and 69 and 70, respectively.
(b) Article 71 of the Patent Law lays down the requirements that persons wishing to
obtain a compulsory licence must meet.  Thus, they must have:  requested a
contractual licence from the owner of the patent and been unable to obtain it on fair
commercial terms customary in Uruguay, within 90 days following the request.
Under the second paragraph of Article 71, this requirement may be waived inIP/C/W/330
Page 31
situations of national emergency, extreme urgency, or in cases of non-commercial
public use and anti-competitive practices.
(c) From the provisions of Article 77 of the Patent Law, subparagraphs (a) and (c), as
well as from the provisions cited in (a) above and those relating to the various typesof compulsory licences (for example, Article 58 concerning public interest) it clearly
follows that their scope and duration are limited to the purpose for which they were
granted.
(d) Article 73 (a) of the Patent Law clearly establishes that compulsory licences may not
be exclusive.
(e) According to Article 73(d) of the PL, a compulsory licence may not be assigned
without that part of the enterprise or goodwill which exploits the subject-matter of the
licence.
(f) Article 56 of the PL establishes that in the case of compulsory licences for reasons of
public interest, the supply will be exclusively to meet the needs of the domestic
market.
(g) Under Article 59 of the PL, uses granted under a compulsory licence may be
withdrawn, subject to appropriate protection of the legitimate interests of the personswho have received the authorization, if the circumstances which gave rise to the
authorization have ceased to exist and are unlikely to recur.  The competent
authorities are empowered to examine whether such circumstances still exist, on
receiving a substantiated request.
(h) Article 77(b) establishes that, in general, the licensor will be remunerated and that the
amount of remuneration will be fixed according to the circumstances specific to each
case, taking into account the economic value of the exploitation of the licensed
invention, as well as other factors such as average royalties for the sector under
commercial licensing agreements.
(i) The resolutions granting compulsory licences are issued by the National Industrial
Property Directorate (NIPD) or by the Executive Power, in the case of licences for
reasons of public interest.  Both resolutions may be reviewed, upon application for
reconsideration or appeal to a higher administrative authority in the case of the NIPD,
an agency subordinate to the Executive Power. After that, under the Constitution and
special laws, any final State resolution may be set aside by the AdministrativeTribunal, a specialized five-member quasi-judicial body.
(j) According to Article 74 of the PL, if the parties are unable to agree on the appropriate
remuneration or the other conditions for the granting of a compulsory licence, an
arbitral tribunal shall be appointed to decide the matter. Its decision will be adoptedby a resolution of the NIPD (Article 75) granting the licence. Consequently, as the
fixing of the remuneration forms part of the NIPD decision granting the licence, it can
be reviewed in the same way as the latter, i.e. by recourse to the appropriate
administrative remedies and then by an action to set aside before the Administrative
Tribunal, as described in the preceding paragraph.
(k) The second paragraph of Article 71 states that in the case of compulsory licences for
anti-competitive practices (Articles 60 to 63 of the PL), the interested party, the
potential user, may disregard the requirements imposed by the first paragraph in other
cases.IP/C/W/330
Page 32
(i) According to Article 60 of the PL, a compulsory licence may be granted for
anti-competitive practices if the competent authority, following
administrative or judicial procedures that confer on the patent owner the right
to a fair hearing and other guarantees, has previously determined that theowner has been involved in practices deemed anti-competitive or has abused
the rights conferred by the patent or a dominant market position.
(ii) Although the PL does not specifically provide for the correction of anti-
competitive practices as a factor to be taken into account in fixing the amount
of remuneration, inasmuch as the Law grants the competent authorities
powers to determine that amount and to refuse to withdraw the authorization
if the circumstances which gave rise to it are likely to recur, it is clear from
the provisions as a whole that the authorities must take this factor into
account. Thus, for example, Article 62 of the PL states that if the owner of
the patent continues the acts or practices that led to the determination of anti-
competitive practices or abuse of the rights conferred by the patent, the rightto the patent may be cancelled, either ex officio  or at the request of an
interested party, subject to a prescribed period of notice.
(l) As already mentioned, Articles 69 and 70 of the PL deal with the subject of
“dependent patents”.  According to Article 69, if a patented invention or utility modelcannot be exploited without infringing an earlier patent, the owner or a licensee may
request the grant of a compulsory licence in respect of the other patent, insofar as it is
necessary to work the patent and avoid infringement. Article 70 lays down the
conditions for the granting of this type of compulsory licence, namely:  the invention
claimed in the second patent must involve an important technical advance ofconsiderable economic significance in relation to the invention claimed in the first
patent (subparagraph (a));  the owner of the first patent must be entitled to obtain a
cross licence on reasonable terms to use the invention claimed in the second patent
(subparagraph (b));  and assignment of the authorized use of the first patent must
include use of the second patent (subparagraph (c)).
The other requirements of Article 31 of the TRIPS Agreement concerning notification of the
patent holder as soon as reasonably practical when compulsory licences are granted in situations of
national emergency (subparagraph (b));  the informing of the right holder in cases of public non-
commercial use;  the restriction of compulsory licences for semi-conductor technology to cases of
public non-commercial use or the remedying of anti-competitive practices (subparagraph (c));  and, in
part, use predominantly for the supply of the domestic market are not specifically provided for in thePL. However, they are mandatory by application of the general principles laid down in the legislation,
such as those requiring that the patent holder be notified or informed, or because the provisions of the
TRIPS Agreement itself so require, since, as has repeatedly been pointed out, these provisions have
been incorporated into the national legislation and form part of domestic law, for example Law
No. 16.671 of 13 December 1994 on semi-conductor technology.
18. What term of protection does the patent law of Uruguay provide for patents?  Please
describe any provisions for extension of the term of protection and cite to the relevant
provisions of the law.
In accordance with Article 33 of the TRIPS Agreement, Article 21 of the Law states that the
term of protection for patents for inventions shall be 20 years as from the application filing date, while
making no provision for extensions.IP/C/W/330
Page 33
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
19. Please describe in detail the protection for layout-designs of integrated circuits providedunder the laws of Uruguay, including the term of protection, and cite to the relevant provisions
of law.
As repeatedly noted, Uruguay’s ratification of the TRIPS Agreement incorporated its
provisions, and in particular Articles 35 to 38 concerning integrated circuits, into the domestic law.
In its turn, the reference in Article 35 of the TRIPS Agreement to Articles 2 through 7 (other
than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectual
Property in Respect of Integrated Circuits incorporates these provisions into domestic law also,
making them mandatory. Therefore, without prejudice to the possibility of their direct individualapplication, they constitute a positive source of integration and interpretation additional to the specific
rules of the legislation on patents, industrial designs, copyright and unfair competition adopted to
protect layout-designs of integrated circuits, as the case may be, or prevent acts of unfair competition
that might affect their creators.
In accordance with the above and Article 4 of the Integrated Circuits Treaty, layout-designs
that meet the corresponding requirements for the acquisition of each type of right may acquire
protection through patents, industrial designs or copyright, or through the rules on unfair competition.
The protection provided for patents and industrial designs and for copyright, together with the
general provisions of civil and procedural law, by application of the general principles or as a result of
the rules on unfair competition, confer on the right holder and the creator of the layout-design civil
remedies and provisional measures for protecting their right.
H. PROTECTION OF UNDISCLOSED INFORMATION
20. Please describe in detail how the laws of Uruguay provide for the protection of
undisclosed information as required by Article 39.2 of the TRIPS Agreement and provide
citations to the relevant provisions of law.
Like the other provisions of the TRIPS Agreement, the provisions of the Paris Convention
(Stockholm Act of 14 July 1967), and in particular those of its Article 10 bis on unfair competition,
have been incorporated into Uruguay’s domestic law, having been ratified by Decree-Law No. 14.910of 10 July 1979.  Consequently, by application of these provisions and, moreover, the general rules
and principles of civil law, persons who have lawfully within their control information that fulfils the
requirements of Article 39.2 of the TRIPS Agreement may prevent it from being disclosed to,
acquired by, or used by others in a manner contrary to honest commercial practices.
21. Please describe in detail the manner in which protection is provided test data regarding
pharmaceutical and agricultural chemical prod ucts submitted to the government in order to
obtain marketing approval in Uruguay and cite to the relevant provisions of law.
With regard to undisclosed submitted to the competent authority as a condition of approval of
the marketing of pharmaceutical or agricultural chemical products, provided they meet the
requirements of Article 39.3 of the TRIPS Agreement, they will be protected against unfair
commercial use.  Moreover, Article 197 of Law No. 17.296 stipulates that officials of the Ministry of
Livestock, Agriculture and Fisheries who obtain information in the course of their inspection
activities must keep that information secret.
Likewise, they must preserve the confidentiality of any administrative or judicial proceedings
of which they have knowledge.IP/C/W/330
Page 34
At the same time, Article 6 of Executive Decree No. 324/999 of 12 October 1999 on the
approval of the marketing of pharmaceutical products states that the applicant must declare the
undisclosed nature of information provided for the purpose of obtaining authorization.
22. Are other applicants for ma rketing approval for their own versions of a previously
approved pharmaceutical or agricultural chemical products permitted to rely on data submitted
by the earlier applicant?  If so, how long a period of exclusivity is given the earlier applicant
before such reliance becomes possible.
Apart from the above-mentioned protection against unfair use under Article 39.3 of the
TRIPS Agreement, Uruguay has no provisions for non-use by the marketing approval authority of testdata to which it has previously had access for the purpose of approving a version of the same product.
However, the authority and its officials are obliged  to keep secret any information submitted for
marketing approval purposes.
I. ENFORCEMENT
23. Please describe in detail the manner in which the laws of Uruguay provide for effective
action against infringement of intellectual prop erty rights as required by Article 41.1 of the
TRIPS Agreement.
Copyright and related rights
The Uruguayan Copyright Law (No. 9.739 of 17 December 1937) and the Codes of Civil and
Criminal Procedure contain provisions that have been duly applied to ensure the enforcement of
copyright.
These include procedural rules permitting judicial examinations, without the knowledge of
the opposing party or alleged infringer, for the purpose of establishing breaches of the law;  in
addition, there are provisions relating to the seizure of infringing copies and equipment and laying
down civil and criminal penalties.
Industrial property
In relation to Article 41.1 of the TRIPS Agreement, there are expeditious administrative and
judicial remedies to deter any infringement:
From the administrative standpoint, bot h Trademark Law No. 17.011 and its Regulatory
Decree No. 34/99 and Patent Law No. 17.164 and it s Regulatory Decree No. 11/00 provide for special
administrative procedures based on the latest standards.
From the judicial standpoint, Laws Nos 17.011 and 17.164, Articles 81 to 85 and 106 and
107, respectively, establish offences and penalties for infringers of industrial property rights, namely,
trademarks and appellations of origin, in the first instance, and patents, utility models and industrialdesigns, in the second.
Likewise, Articles 87 and 88 of Law No. 17.011  and 99 to 105 of Law No. 17.164 provide for
civil proceedings for infringements of the trademark and patent regulations.
All these procedures, both administrative and judicial, whether civil or criminal, are based on
the constitutional principle of due process. The administrative procedures are laid down in special
laws and decrees such as Decree No. 500/91, which applies to the Uruguayan public service inIP/C/W/330
Page 35
general. Civil proceedings are governed by the General Code of Procedure and criminal proceedings
by the Code of Criminal Procedure.
24. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order
production of evidence necessary to substantiate a party's claims where that party has beenunable to obtain such evidence from the opposi ng party.  Please describe how the laws or
regulations of Uruguay provide this authorization, citing to the relevant provisions of law or
regulation.
Copyright and related rights
The substance of this provision is not expressly included in the copyright legislation.
This judicial authority may nevertheless be regarded as covered by the general and particular
rules of procedure.
Thus, Article 168 of the General Code of Procedure (Law No. 15.982 of 18 October 1988) on
documents within the control of the opposing party states:  “A party wishing to make use of a
document which it declares to be within the control of the opposing party may request the court to
order the latter to produce it within the period it shall determine.
If other evidence clearly shows the probable existence and content of the document, refusal to
produce it shall be regarded as acknowledgement of that content.”
In this respect, reference may also be made to Article 189 of the Code, entitled “Cooperation
in the taking of evidence”, paragraph 3 of which states:  “If one of the parties is required to cooperate
and unjustifiably refuses to do so, the court may order its cooperation. If, despite that, it shouldcontinue in its recalcitrance, the court may order that the formalities be waived and the refusal to
cooperate interpreted in the evidence as confirmation of the accuracy of the statements of the
opposing party with regard to the fact it is desired to prove, in the absence of proof to the contrary.”
At the same time, the wording of Article 43.1 suggests that this is a self-enforcing provision
since it stipulates that:  “The judicial authorities shall have the authority … to order … .”
Industrial property
In relation to Article 43.1 of the TRIPS Agreement, Article 168 of the GCP allows the
plaintiff to request that the opposing party be ordered to produce documentation within his control
which the plaintiff wishes to use. Refusal may be regarded as acknowledgement of content.
25. Please describe in detail the all of the ci vil remedies that are available to right holders
under the laws of Uruguay, citing to the relevant provisions of law or regulation.
Copyright and related rights
It is first necessary to cite the above-mentioned General Code of Procedure. Articles 306 et
seq. provide for a series of “preparatory measures” applicable to any proceedings. Thus:
“Any proceedings may, at the initiative of a party, include a preliminary phase for the purpose
of:
(1) determining or completing the active or passive legitimation of the parties to the
future proceedings;IP/C/W/330
Page 36
(2) expediting the taking of evidence which might be lost if action were postponed to a
later stage;
(3) serving notices to establish default and obtaining elements needed for the proceedings
such as documents, accounts and the like;
(4) ordering precautionary measures or the provision of security in connection with the
subsequent proceedings.
Articles 311 et seq.  also establish precautionary measures.”
Secondly, Article 47 of Copyright Law No. 9.739 of 17 December 1937, as amended by
Article 328 of Law No. 16.170 of 27 December 1987, stipulates that:  “The unlawfully reproduced
copies and any materials used for reproduction, communication or public performance shall be seized.
As a preparatory measure, the interested party may apply for their attachment while
requesting the competent court for exemption fr om counter-security, where there is good cause.
In any event, the judgement shall order the destruction or rendering unusable of the copies
and materials seized, if they are capable of being used, to the extent necessary to prevent unlawful
exploitation.
Copies acquired by third parties in good faith for their personal use shall not be destroyed.”
With regard to civil liability, Article 51 of Law No. 9.739 provides for civil proceedings for
damages and for the imposition on infringers of a civil penalty consisting of the profits or income
improperly received. Thus, in accordance with the Law in force, as reflected in Uruguayan legaltheory and precedents, infringers are liable not only for damages (consequential damages and loss of
income) but also for all profits or income improperl y received as a result of the unlawful exploitation
of the work.
Industrial property
The judicial procedures concerning enforcement are laid down in Articles 87 and 88 of
Trademark Law No. 17.011, which authorize actions for damages and the prohibition of the use of
infringing marks, and Articles 99 to 105 of Patent Law No. 17.164, which authorize actions against
anyone performing acts in violation of the rights deriving therefrom. In these cases, the interested
parties may make use of the ordinary proceedings laid down in Articles 337 et seq.  of the GCP or the
precautionary proceedings laid down in Articles 311 et seq.  of the same Code. Those concerned are
personally notified of all complaints and receive a copy of the document. Article 44 of the Code
permits the parties to be represented by their at torney, except at the preliminary hearing when they
must appear in person accompanied by a lawyer. The court costs correspond to the fees and charges
laid down by the budgetary laws in force and are relatively low. Each party must attach to the
complaint or plea the evidence on which its arguments are based (Articles 117 and 131 GCP) and thisevidence is collected by the Court:  the documentary evidence is combined with the notification of the
other party, the procedural documents are processed and witnesses are questioned (Articles 341 and
343 GCP). The two parties then plead on the basis of the evidence presented (Article 343 GCP) and,
finally, the judge delivers a duly reasoned judgem ent (Article 343 GCP), which may be appealed by
either of the parties (Articles 248 to 261), in which case the file is transmitted to a three-memberhigher court or tribunal (Article 344 GCP).IP/C/W/330
Page 37
26. Please describe in detail the provisional procedures and remedies available to right
holders under the laws of Uruguay, citing to the relevant provisions of law and regulation, and
indicate any condition under which a right holder may avail itself of those procedures and
remedies.
Article 103 of Patent Law No. 17.164 provides for the adoption of provisional or
precautionary measures in accordance with the GCP.  Article 317 of the GCP deals with provisional
measures, laying down the same procedure as for precautionary measures (Articles 311 and 316).
Where the preservation of evidence is concerned, in addition to these articles, Article 309.6 on
preliminary measures also applies.  Article 315 of the GCP provides for measures of this kind to be
ordered without the knowledge or intervention of the other party.  Articles 314.2 and 314.3 of the
GCP require the production of prima facie  evidence and security and the adoption of the measure is
decided as soon as the evidence has been examined.  Article 315 of the GCP provides for notification
of the measure immediately upon execution and both the person affected by the measure and the
applicant may appeal the decision.  Article 311.2 of the GCP provides for precautionary measures to
lapse automatically if a complaint is not lodged w ithin 30 days and for the applicant to be ordered to
pay all the costs of the proceedings and any damages.
J. SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES
27. Please describe in detail the procedures under the laws of Uruguay that provide for
border enforcement at least for trademark counte rfeiting and copyright piracy, identifying the
competent authority and citing to the re levant provisions of law or regulation.
Copyright and related rights
Under the Uruguayan legal system, the party affected may request the courts to apply
precautionary measures where there is a possibility of counterfeit or unlawfully reproduced goodsentering the country.
As for the present Copyright Law, it does not contain any express provisions. The draft law,
approved with amendments in the Chamber of Representatives and currently being considered in the
Culture Committee of the Chamber of Senators, incorporates the following Article 137:
“Holders of intellectual property rights who have valid grounds for suspecting that attempts or
preparations are being made to import into the national territory goods which, in accordance
with the terms of the applicable legislation, have been manufactured, distributed or imported,
or are intended for distribution, without the authorization of the holder of the intellectual
property right may request the competent customs or judicial authorities to order special
control measures in respect of those goods, their preventive attachment or the precautionarysuspension of the corresponding customs proced ure. Evidence justifying the suspicions must
be produced.
If the request is made to the National Directorate of Customs, the latter, having ordered the
precautionary measures requested, shall promptly notify the importer and the applicant. Ifwithin 10 working days of notification of the right holder or his representative, no evidence of
initiation of the corresponding civil or criminal proceedings has been received, the preventive
measures shall be revoked and the goods released, without prejudice to any liabilities that may
have been incurred by an applicant who has knowingly lodged an unfounded complaint.”
Industrial property
The release of goods may be suspended by the judicial (customs court) or administrative
(customs collectors) authorities upon receipt of a substantiated complaint that goods are about to beIP/C/W/330
Page 38
imported in infringement of intellectual property rights. Once it is shown that the offence is not one of
the three for which Law No. 13.318 on customs disputes provides, namely, smuggling, discrepancies
and fraud, the customs court must render account to the Criminal Court.
28. Please indicate if border enforcement is available to owners of other forms of intellectual
property and, if so, please describe the procedures and remedies available in relation to each
form of intellectual property, citing the relevant provisions of law.
Copyright and related rights
With respect to copyright, please refer to the reply to Question 27.
Industrial property
The provisions mentioned in the reply to the Ques tion 27 are applicable to the owners of other
forms of intellectual property, such as patents, utility models, etc.
29. Article 58 of the TRIPS Agreement specifies procedures to be followed where the
competent authorities can act ex officio .  Please explain whether the competent authorities in
Uruguay are empowered to act ex officio  and, if so, please identify the intellectual property
areas subject to ex officio action.
Copyright and related rights
Without prejudice to the above, in the field of copyright the National Directorate of Customs
has acted ex officio  in certain situations involving goods presumed to be unlawful or suspicious.
Industrial property
There is no express provision in the Uruguayan legislation for the ex officio  action mentioned
in Article 58 of the TRIPS Agreement.  Nevertheless, customs administrative proceedings have been
initiated through the Foreign Ministry at the request of the Embassy of another Member State.
K. CRIMINAL PROCEDURES
30. Please describe in detail how the laws of Uruguay implement Article 61 of the TRIPS
Agreement that requires Members to have criminal procedures and penalties, including
imprisonment and/or monetary fines sufficient to act as a deterrent, at least for cases of wilful
trademark counterfeiting and copyright infringement  on a commercial scale.  Please cite to the
relevant provisions of law and regulation.
Copyright and related rights
In the criminal law there are two provisions relating to copyright and related rights.
Firstly, Article 46 of Law No. 9.739, the Copyri ght Law, as amended by Article 23 of Law
No. 15.913 of 17 November 1987, stipulates that:  “Whoever publishes, sells, reproduces or causes to
be reproduced by any means, in whole or in part, an unpublished or published work without the
written authorization of its author or his successor in title or its purchaser, in whatever capacity, or
attributes it to a different author, thereby contravening the provisions of this Law, shall be liable to aterm of from 3 months to 3 years imprisonment.”
Secondly, Law No. 15.289 of 14 July 1982 introduced a new criminal offence with a view to
protecting producers of phonograms and/or vide ograms from unauthorized reproductions. AccordingIP/C/W/330
Page 39
to Article 1, “Anyone reproducing a phonogram or videogram for gain and without the written
authorization of its producer, and anyone distributing to the public or stocking for that purpose the
reproductions thus obtained, shall be liable to the penalty laid down in Article 46 of Law No. 9.739 of
17 December 1937. The same penalty shall be applicable to anyone fixing the live performance of a
literary or artistic work by whatever means, clearly for the purpose indicated in the previous sentenceand without the written authorization of the author and the performer, as well as to anyone distributing
to the public or stocking for that purpose the versions thus obtained.”
At the same time, it should be pointed out that a draft law establishing a new regulatory
framework for copyright has been approved by the Chamber of Representatives and is currently being
considered in the Chamber of Senators.
Article 146 of the draft law establishes a new criminal offence characterized as follows:
“Whoever, without the authorization of their author or respective owner protected by this Law,
introduces works, performances, phonograms or broadcasts into a data storage system for the purpose
of reproducing or distributing them shall be liable to imprisonment for 3 to 24 months.”
Article 47 of Copyright Law No. 9.739 of 17 December 1937, as amended by Article 328 of
Law No. 16.170 of 27 December 1987, stipulates that:
“The unlawfully reproduced copies and any materials used for reproduction, communication
or public performance shall be seized.
As a preparatory measure, the interested party may apply for their attachment while
requesting the competent court for exemption fr om counter-security, where there is good cause.
In any event, the judgement shall order the dest ruction or rendering useless of the copies and
materials seized if they are capable of being used, to the extent necessary to prevent unlawful
exploitation.
Copies acquired by third parties in good faith for their personal use shall not be destroyed.”
Industrial property
Article 61 of the TRIPS Agreement is implemented as follows:Articles 81 to 83 of Trademark Law No. 17.011 establish offences and penalties relating to
trademarks.  There is also provision for the forfeiture and destruction of goods (Article 84) and the
protection is extended to appellations of origin (Article 85).
Articles 106 and 107 of Patent Law No. 17.164 establish offences and penalties relating to
patents, characterizing them as follows:
Article 106 provides for a term of 6 months to 3 years imprisonment for anyone who infringes
any of the rights protected by patents. It also provides for the forfeiture of the infringing products and
the implements used in making them.
Article 107 increases the term of imprisonment to 15 months to 4 years in the following
aggravating circumstances:  (a) where the infringer was an employee of the patent owner or a licenseeand (b) where he obtained from the latter knowledge of the special methods of making the patented
product.IP/C/W/330
Page 40
31. Article 61 also requires that remedies in a ppropriate cases include the seizure, forfeiture
and destruction of infringing goods and any materials and implements the predominant use of
which has been the commission of the offence.  Please describe the provisions in the laws of
Uruguay that provide for such remedies, and describe the circumstances in which those
remedies would be imposed, citing to the relevant provisions of law or regulation.
Copyright and related rights
The reply to this question is contained in previous replies.
Industrial property
As has just been shown, the new laws on trademarks and other distinctive signs (Law
No. 17.011 of 25 September 1998) and on patents, utility models and industrial designs (Law
No. 17.164 of 2 September 1999) contain many important provisions concerning the enforcement of
the corresponding intellectual property rights which supplement and support the general measures
derived from ordinary civil and procedural law.
The criminal provisions relating to patents in Articles 106 and 107 of the PL are as follows:Article 106 provides for a term of 6 months to 3 years imprisonment for anyone who infringes
any of the rights protected by patents. It also provides for the forfeiture of the infringing products andthe implements used in making them.
Article 107 increases the term of imprisonment to 15 months to 4 years in the following
aggravating circumstances:  (a) where the infringer was an employee of the patent owner or a licensee
and (b) where he obtained from the latter knowledge of the special methods of making the patentedproduct.
The replies to Questions 23 to 25 are reproduced in the order of Articles 41 to 50 of Part III
(Enforcement of Intellectual Property Rights), Sections 1, 2 and 3 of the TRIPS Agreement.
32. Article 61 also indicates that Members may provide for criminal procedures and
penalties in cases of wilful infringement of oth er forms of intellectual property.  Please describe
any provisions of the laws of Uruguay that provide for such procedures and remedies, citing to
the relevant provisions of law or regulation.
Copyright and related rights
The legal provisions are those referred to above.
L. STATISTICAL QUESTIONS
33. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, integr ated circuit layout-design, and trade secret
enforcement for 2000, including the number of ca ses filed;  injunctions issued;  infringing
products seized;  infringing equipment seized;  cases resolved (including settlement);  and the
amount of damages awarded.
Copyright and related rights
No such information is available.  The Copy right Council will try to implement mechanisms
for obtaining this information.IP/C/W/330
Page 41
34. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringeme nt for 2000, including the number of raids,
prosecutions, convictions, and the amount of fines and/or jail terms (including whether the fines
were paid and whether the jail term was actually served or was suspended) and any other
information establishing that the criminal syst em operates effectively to deter copyright piracy
and trademark counterfeiting.
Copyright and related rights
It is known that in the field of copyright there have been proceedings for phonogram,
videogram and computer program piracy.  There have also been convictions leading to prison
sentences.  The statistical information requested is not available.  As in the previous case, efforts toimplement mechanisms for obtaining this inform ation will be made through the Copyright Council.
JAPAN
A.
COPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of  the National Treatment and Most-Favored-
Nation Treatment under the Copyright and Neighbouring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
National treatment is provided for in Uruguay’s Copyright Law No. 9.739 of
17 December 1937.  Specifically, according to Article 4, “The legal protection of this right shall be
accorded in all cases and to the same extent, whatever the nature or origin of the work or the
nationality of its author and without distinction as to school, denomination or philosophical, political
or economic tendency.” With regard to “most-favoured-nation treatment”, no agreements have been
approved subsequent to the entry into force of the TRIPS Agreement that involve its application.
B. TRADEMARKS
2. Regarding "well-known trademark", please explain how legislation of your country
implements Article 16.2 and 16.3 of the TRIPS Agreement, which Article 6 bis of the Paris
Convention shall apply, mutatis mutandis , to.  Please cite the relevant provisions of your
country's law.
The Uruguayan trademark legislation (Law No. 17.011 of 25 September 1998) protects well-
known trademarks by providing for the nullity of signs or words constituting the total or partial
reproduction, imitation or translation of a well-known mark.
C. PROTECTION OF UNDISCLOSED INFORMATION
3. Please explain how legislation of your county provides for the protection of
"Undisclosed Information" as required by Article 39.1 and 39.2 of the TRIPS Agreement.
Please explain in detail and please cite th e relevant provisions of your country's law.
Like the other provisions of the TRIPS Agreement, the provisions of the Paris Convention
(Stockholm Act of 14 July 1967), and in particular those of its Article 10 bis on unfair competition,
have been incorporated into Uruguay’s domestic law, having been ratified by Decree-Law No. 14.910
of 10 July 1979.  Consequently, by application of these provisions and, moreover, the general rules
and principles of civil law, persons who have lawfully within their control information that fulfils the
requirements of Article 39.2 of the TRIPS Agreement may prevent it from being disclosed to,acquired by, or used by others in a manner contrary to honest commercial practices.IP/C/W/330
Page 42
4. If your legislation ensures that undisclosed te st or other data submitted by an applicant
to the responsible State agency in the procedur e for market authorization of a pharmaceutical
or an agricultural chemical product is protected against disclosure and against unfair
commercial use by a competitor, for example by prohibiting a second applicant for a similar
product from relying on original data of the first applicant, when applying subsequently formarket authorization for a similar product, please explain it in detail.  Does legislation of your
country provide for exceptions to this?  Does legislation of your country set a specific term of
protection by the responsible State agency for undisclosed test or other data of the first
applicant?  If yes, please explain such specific term in detail, citing the relevant provisions of
law.
With regard to undisclosed test or other data submitted to the competent authority as a
condition of approval of the marketing of pharmaceutical or of agricultural chemical products,
provided they meet the requirements of Article 39.3 of the TRIPS Agreement, they will be protected
against unfair commercial use. Moreover, Article 197 of Law No. 17.296 stipulates that officials of
the Ministry of Livestock, Agriculture and Fisheries who obtain information in the course of their
inspection activities must keep that information secret and preserve the confidentiality of anyadministrative or judicial proceedings of which they have knowledge.
At the same time, Article 6 of Executive Decree No. 324/999 of 12 October 1999 on the
approval of the marketing of pharmaceutical produc ts states that the applicant must declare the
undisclosed nature of information provided for the purpose of obtaining authorization.
D.
ENFORCEMENT
5. Please indicate the remedies which the judi cial authorities order regarding each of the
intellectual property rights provided in the TRIPS Agreement, including injunctions, damages,
expenses, destruction or disposal of infringing goods, materials or implements for theirproduction.  Please explain the criteria and the way of calculation to decide the amount of the
damages which judicial authorities order to  the infringer to pay the right holder.
Copyright and related rights
On the basis of the Uruguayan legislation in force, the judicial authorities have at their
disposal remedies for dealing with breaches of the law, both civil and criminal.  These normally take
the form of preparatory or preliminary measures.
Article 47 of Copyright Law No. 9.739 of 17 December 1937, as amended by Article 328 of
Law No. 16.170 of 27 December 1987, stipulates that:
“The unlawfully reproduced copies and any materials used for reproduction, communication
or public performance shall be seized.
As a preparatory measure, the interested party may apply for their attachment while
requesting the competent court for exemption fr om counter-security, where there is good cause.
In any event, the judgement shall order the destruction or rendering unusable of the copies
and materials seized, if they are capable of being used, to the extent necessary to prevent unlawful
exploitation.
Copies acquired by third parties in good faith for their personal use shall not be destroyed.”
Article 51 of Law No. 9.739 provides for civil proceedings for damages and for the
imposition on infringers of a civil penalty consisting of the profits or income improperly received.IP/C/W/330
Page 43
Thus, in accordance with the Law in force, as reflected in Uruguayan legal theory and precedents,
infringers are liable not only for damages (consequential damages and loss of income) but also for all
profits or income improperly received as a result of the unlawful exploitation of the work.
Industrial property
In Uruguay, expeditious deterrent action, both administrative and judicial, can be taken
against any act of infringement .
All these proceedings, both administrative and judicial, whether criminal or civil, are based
on the constitutional principle of due process.
The administrative procedure is laid down in special laws and decrees, as well as in General
Decree No. 500/91, which covers the whole of the Uruguayan public service.
Provisional measures may be ordered under administrative procedures, since Decree
No. 500/91 on administrative procedures authorizes the application of the GCP, wherever relevant.
Civil proceedings are governed by the General Code of Procedure (GCP) and criminal
proceedings by the Code of Criminal Procedure (CCP).
Administrative decisions are taken by the competent administrative authority through
administrative acts, which are always reasoned and in writing, within a file that always takes written
form.
As far as evidence is concerned, all the parties involved have an opportunity to produce
evidence, to verify the evidence produced by the other party and to submit arguments relating to theevidence produced. The time limits for producing ev idence,  the manner in which the evidence is
presented and  the form it takes are all regulated, as are the time limits for processing it and for
submitting arguments.
Administrative decisions can be reviewed by a specialized five-member quasi-judicial body
(Administrative Tribunal).
Judicial decisions (judgments), also in writing and duly reasoned, are taken by the judges who
make up the judiciary. These decisions must be notified to the parties personally or, if this is
physically impossible, by means which ensure that the interested party is aware of them.
Judicial decisions made by judges in the courts of first instance, whether civil (civil or district
judges depending on the jurisdiction) or criminal, can always be reviewed by the specialized appeal
courts. In these cases, the judgements, depending on the jurisdiction, may be set aside by the five-
member Supreme Court of Justice, the highest judicial authority.
The Trademark and Patent Laws empower the ordinary courts to order infringers of industrial
property rights to pay damages where there is fault or fraud. The payment of costs and charges may be
ordered only in cases of bad faith or culpable negligence.
The Civil Code provides, in general, for liability and the payment of damages in cases of fault
or fraud.IP/C/W/330
Page 44
6. Please explain the kind and amounts of criminal penalties including implement and fines
regarding intellectual property rights, citing th e relevant provisions of your country's law.  In
particular, are the crimes persecuted only when the injured party has made a formal
complaint?  Please explain whether penalties are consistent with Article 61 of the TRIPS
Agreement, which requires provisions for a sufficient deterrent, consistently with the level ofpenalties applied for crimes of a corresponding gravity.
Copyright and related rights
In the criminal law there are two provisions relating to copyright and related rights.
Firstly, Article 46 of Law No. 9.739, the Copyri ght Law, as amended by Article 23 of Law
No. 15.913 of 17 November 1987, stipulates that:  “Whoever publishes, sells, reproduces or causes to
be reproduced by any means, in whole or in part, an unpublished or published work without the
written authorization of its author or his successor in title or its purchaser, in whatever capacity, or
attributes it to a different author, thereby contravening the provisions of this Law, shall be liable to a
term of from 3 months to 3 years imprisonment.”  Secondly, Law No. 15.289 of 14 July 1982introduced a new criminal offence with a view to protecting producers of phonograms and/or
videograms from unauthorized reproductions.  According to Article 1, “Anyone reproducing a
phonogram or videogram for gain and without the written authorization of its producer, and anyone
distributing to the public or stocking for that purpose the reproductions thus obtained, shall be liable
to the penalty laid down in Article 46 of Law No. 9.739 of 17 December 1937. The same penalty shallbe applicable to anyone fixing the live performance of a literary or artistic work by whatever means,
clearly for the purpose indicated in the previous sentence and without the written authorization of the
author and the performer, as well as to anyone distributing to the public or stocking for that purpose
the versions thus obtained.”
Complaints for infringement of copyright are prosecuted ex officio  or through public right of
action.
At the same time, it should be pointed out that a draft law establishing a new regulatory
framework for copyright has been approved by the Chamber of Representatives and is currently being
considered in the Chamber of Senators.
Article 146 of the draft law establishes a new criminal offence characterized as follows:
“Whoever, without the authorization of their author or respective owner protected by this Law,
introduces works, performances, phonograms or broadcasts into a data storage system for the purpose
of reproducing or distributing them shall be liable to imprisonment for 3 to 24 months.”
Industrial property
In accordance with Article 61 of the TRIPS Agreement, Trademark Law No. 17.011 establish
offences and penalties relating to trademarks, as well as providing for the forfeiture and destruction of
goods and extending the protection to appellations of origin.
It also provides for the infringing marks a nd the implements used for making them to be
destroyed or rendered unusable and for the infringing goods to be seized and destroyed, unless they
can be awarded to public or private charitable institutions.
The Patent Law specifies a term of 6 months to 3 years imprisonment for anyone who
infringes any of the rights protected by patents. It also provides for the forfeiture of the infringing
products and the implements used in making them.IP/C/W/330
Page 45
Under the same Law the term of imprisonment may be increased to 15 months to 4 years
where the following aggravating circumstances apply:  (a) where the infringer was an employee of the
patent owner or a licensee and (b) where he obtained  from the latter knowledge of the special methods
of making the patented product.
Moreover, infringing articles and the implements used in making them may be seized and
their fate decided in consultation with the NIPD.
7. Please indicate titles of laws and regulations and their provisions in which the
suspension of the release of counterfeit tradem ark or pirated copyright goods is prescribed, as
stipulated in Article 51 of the TRIPS Agreement.
Copyright and related rights
Under the Uruguayan legal system, the party affected may request the courts to apply
precautionary measures where there is a possibility of counterfeit or unlawfully reproduced goods
entering the country.
The National Directorate of Customs has acted ex officio  in several proceedings relating to
unlawfully reproduced goods.
As for the present Copyright Law, it does not contain any express provisions. The draft law,
approved with amendments in the Chamber of Representatives and currently being considered in the
Culture Committee of the Chamber of Senators, incorporates the following Article 137:
“Holders of intellectual property rights who have valid grounds for suspecting that attempts or
preparations are being made to import into the national territory goods which, in accordance with theterms of the applicable legislation, have been manufactured, distributed or imported, or are intended
for distribution, without the authorization of the holder of the intellectual property right may request
the competent customs or judicial authorities to order special control measures in respect of those
goods, their preventive attachment or the precautionary suspension of the corresponding customs
procedure. Evidence justifying the suspicions must be produced.
If the request is made to the National Directorate of Customs, the latter, having ordered the
precautionary measures requested, shall promptly notify the importer and the applicant. If within
10 working days of notification of the right holder or his representative, no evidence of initiation of
the corresponding civil or criminal proceedings has been received, the preventive measures shall be
revoked and the goods released, without prejudice to any liabilities that may have been incurred by an
applicant who has knowingly lodged an unfounded complaint.”
Industrial property
The release of goods may be suspended by the judicial (customs court) or administrative
(customs collectors) authorities upon receipt of a substantiated complaint that goods are about to beimported in infringement of intellectual property rights. Once it is shown that the offence is not one of
the three for which Law No. 13.318 on customs disputes provides, namely, smuggling, difference and
fraud, the customs court must render account to the Criminal Court.
In accordance with Article 61 of the TRIPS Agreement, Trademark Law No. 17.011
establishes offences and penalties relating to trademarks (Articles 81 to 83), as well as providing for
the forfeiture and destruction of goods (Article 84) and extending the protection to appellations of
origin (Article 85).IP/C/W/330
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The criminal provisions of the Patent Law specify a term of 6 months to 3 years
imprisonment for anyone who infringes any of the rights  protected by patents. It also provides for the
forfeiture of the infringing products and the implements used in making them.
This term of imprisonment may be increased to 15 months to 4 years where the following
aggravating circumstances apply:  (a) where the infringer was an employee of the patent owner or a
licensee and (b) where he obtained from the latter knowledge of the special methods of making the
patented product.
SWITZERLAND
A. PATENTS
Uruguayan patent law
Uruguay has a new law on patents, utility models and industrial designs, namely Law
No. 17.164 approved on 2 September 1999, which entered into force on 18 January 2000 (hereinafter
“PL”).
With this law Uruguay completed the process of adapting its relevant legislation in order to
fulfil its obligations under the TRIPS Agreement, having updated its patent law in accordance with
modern legislative standards.
Moreover, by Law No. 16.671 of 17 December 1995 Uruguay ratified the TRIPS Agreement,
incorporating its provisions into the Uruguayan national legislation to form part of domestic law.
In the field of enforcement, in addition to the specific provisions of the new Law, the modern
rules of the General Code of Procedure establish expeditious and flexible procedures that permit theadoption of a broad range of provisional and precautionary measures, within a context of respect for
the rights of the defence and equal treatment of the parties.
1. Does your legislation grant patent protection for inventions relating to products and
processes in all fields of technology?  Please in dicate details regarding the protection for micro-
organisms and non-biological and microbiological pr ocesses.  Are there any exceptions?  If so,
please explain what these exceptions are and ho w they comply with Article 27 of the TRIPS
Agreement.  How are plant varieties protected in your law?
Article 27.1:  Article 8 of the Law states that inventions of new products or processes which
involve an inventive step and are capable of industrial application are patentable, i.e. this basic
provision includes all fields of technology without discrimination as to the place of invention,technological sector or origin of the patented products or processes.
In keeping with most modern legislation, Article 13 of the Patent Law, subparagraphs (a), (c),
(d) and (e), specifies and lists the subject-matter that does not constitute a patentable invention
because it fails to meet the requirements of patentability.  Thus, the following are not consideredinventions for the purposes of the Law:  discoveries, scientific theories and mathematical methods
(a); schemes, plans, rules for playing games, business, accounting, financial, educational, publicity,
lottery or taxation principles or methods (c);  literary or artistic works, or any other aesthetic creation,
and scientific works (d);  computer programs considered in isolation (e);  and various methods of
reproducing information (f).
Article 27.2:  Article 14(b) of the Patent Law stipulates that inventions contrary to public
order, morality, public health, the national food supply, security or the environment shall not be
patentable.IP/C/W/330
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Article 27.3(a):  Article 14(a) of the Patent Law stipulates that diagnostic, therapeutic or
surgical methods for the treatment of humans or animals shall not be patentable.
Article 27.3(b):  Article 13(b) stipulates that plants and animals, other than micro-organisms,
and essentially biological processes for the producti on of plants or animals, other than non-biological
and microbiological processes, are not considered to be inventions.
According to Article 13(g) of the Patent Law, biological or genetic material existing in nature
is not considered to be an invention.
Plant varieties are protected by special legislation based on the standards of the UPOV
Convention, to which Uruguay is party. The 1978 version of this Convention was approved by Law
No. 16.580 of 21 September 1994. Moreover, Law No. 16.811 of 21 February 1997 contains the
national legislation on the protection of cultivars.  Thus, Uruguay possesses an effective sui generis
system for the protection of plant varieties.
2. Please describe in detail any provisions in your law permitting the use of a patent
without authorization of the right holder.  Please cite the relevant provisions of law and describe
in detail the conditions under which such use may occur.
Article 39 of the Patent Law stipulates that the rights conferred by patents shall not extend to
the following:  acts carried out in private for non-industrial or non-commercial purposes, provided
that they do not cause economic prejudice to the owner of the patent (subparagraph (a));  the
preparation of a medicine for a single patient, according to a medical prescription and under the
supervision of an authorized professional (subparagraph (b));  acts carried out solely for experimental
purposes, including acts anticipating future commercial exploitation carried out during the year priorto the expiry of the patent (subparagraph (c));  acts carried out for teaching, scientific or academic
research purposes (subparagraph (d));  the importation of small quantities of goods of a non-
commercial nature contained in the personal effects of travellers or sent in small packages
(subparagraph (e)). Accordingly, third parties may avail themselves of these uses without the
authorization of the patent owner.
According to Article 41 of the Patent Law, owners of patents may not prevent acts carried out,
even without disclosure, by third parties who, in g ood faith, on the date of filing of the application or
priority, where applicable, were already manufacturing the product or using the process that forms the
subject-matter of the invention in Uruguay or had made serious preparations to manufacture, use or
work it. Such acts may be continued only to meet the needs of the exploiting enterprise and the right
is not transferable without the exploiting enterprise.
In accordance with the Constitution and other special laws, Articles 42 and 43 of the Patent
Law provide for inventions made in authorized monopolies belonging to the State or to private
individuals to be patentable.  However, they may be industrially or commercially worked only with
the agreement of the holder of the monopoly or after the monopoly has expired. Like any propertyright, in accordance with the Constitution, patent  rights may be expropriated by the State. This
requires a special law and the owner must be granted appropriate compensation under a judicial
procedure with every guarantee.
3. Does your legislation, in accordance with Article 27.1 in combination with Article 31 of
the TRIPS Agreement, consider importation as "working" a patent (and therefore preclude
compulsory licensing, if a product is being imported)?IP/C/W/330
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The third paragraph of Article 54 of the Patent Law clearly establishes that the exploitation of
a patent includes the importation of its subject-matter, in addition to its use and any other commercial
activity relating thereto.
4. Does your legislation make the granting of a compulsory license subject to all the
conditions enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant
provisions of law.
Articles 54 to 80 of the Patent Law (PL) authorize the granting of compulsory licences for
various reasons:  non-exploitation (Article 54), publ ic interest (Articles 55 to 59), anti-competitive
practices (Articles 60 to 63), unjustified refusal of a contractual licence (Articles 64 to 68), and
dependent patents (Articles 69 and 70).  The Law also contains a Chapter on general provisions andprocedures (Articles 71 to 80) relating to compulso ry licences.  These articles lay down conditions for
the granting of compulsory licences in accordance with Article 31 of the TRIPS Agreement.
Below, the corresponding provisions of the Patent Law are described in detail in the order of
the paragraphs of Article 31 of the TRIPS Agreement:
(a) The circumstances and requirements for the granting of licences for non-exploitation,
reasons of public interest, anti-competitive practices, unjustified refusal of a
contractual licence, and dependent patents are defined in Articles 54, 55, 60 and 61,
64, and 69 and 70, respectively.
(b) Article 71 of the Patent Law lays down the requirements that persons wishing to
obtain a compulsory licence must meet.  Thus, they must have:  requested a
contractual licence from the owner of the patent and been unable to obtain it on fair
commercial terms customary in Uruguay, within 90 days following the request.Under the second paragraph of Article 71, this requirement may be waived in
situations of national emergency, extreme urgency, or in cases of non-commercial
public use and anti-competitive practices.
(c) From the provisions of Article 77 of the Patent Law, subparagraphs (a) and (c), as
well as from the provisions cited in (a) above and those relating to the various types
of compulsory licences (for example, Article 58 concerning public interest) it clearlyfollows that their scope and duration are limited to the purpose for which they were
granted.
(d) Article 73 (a) of the Patent Law clearly establishes that compulsory licences may not
be exclusive.
(e) According to Article 73(d) of the PL, a compulsory licence may not be assigned
without that part of the enterprise or goodwill which exploits the subject-matter of the
licence.
(f) Article 56 of the PL establishes that in the case of compulsory licences for reasons of
public interest, the supply will be exclusively to meet the needs of the domestic
market.
(g) Under Article 59 of the PL, uses granted under a compulsory licence may be
withdrawn, subject to appropriate protection of the legitimate interests of the persons
who have received the authorization, if the circumstances which gave rise to the
authorization have ceased to exist and are unlikely to recur.  The competent
authorities are empowered to examine whether such circumstances still exist, on
receiving a substantiated request.IP/C/W/330
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(h) Article 77(b) establishes that, in general, the licensor will be remunerated and that the
amount of remuneration will be fixed according to the circumstances specific to each
case, taking into account the economic value of the exploitation of the licensed
invention, as well as other factors such as average royalties for the sector undercommercial licensing agreements.
(i) The resolutions granting compulsory licences are issued by the National Industrial
Property Directorate (NIPD) or by the Executive Power, in the case of licences for
reasons of public interest.  Both resolutions may be reviewed, upon application for
reconsideration or appeal to a higher administrative authority in the case of the NIPD,
an agency subordinate to the Executive Power. After that, under the Constitution andspecial laws, any final State resolution may be set aside by the Administrative
Tribunal, a specialized five-member quasi-judicial body.
(j) According to Article 74 of the PL, if the parties are unable to agree on the appropriate
remuneration or the other conditions for the granting of a compulsory licence, anarbitral tribunal shall be appointed to decide the matter. Its decision will be adopted
by a resolution of the NIPD (Article 75) granting the licence. Consequently, as the
fixing of the remuneration forms part of the NIPD decision granting the licence, it can
be reviewed in the same way as the latter, i.e. by recourse to the appropriate
administrative remedies and then by an action to set aside before the AdministrativeTribunal, as described in the preceding paragraph.
(k) The second paragraph of Article 71 states that in the case of compulsory licences for
anti-competitive practices (Articles 60 to 63 of the PL), the interested party, the
potential user, may disregard the requirements imposed by the first paragraph in othercases.
(i) According to Article 60 of the PL, a compulsory licence may be granted for
anti-competitive practices if the competent authority, following
administrative or judicial procedures that confer on the patent owner the right
to a fair hearing and other guarantees, has previously determined that the
owner has been involved in practices deemed anti-competitive or has abusedthe rights conferred by the patent or a dominant market position.
(ii) Although the PL does not specifically provide for the correction of anti-
competitive practices as a factor to be taken into account in fixing the amount
of remuneration, inasmuch as the Law grants the competent authoritiespowers to determine that amount and to refuse to withdraw the authorization
if the circumstances which gave rise to it are likely to recur, it is clear from
the provisions as a whole that the authorities must take this factor into
account. Thus, for example, Article 62 of the PL states that if the owner of
the patent continues the acts or practices that led to the determination of anti-competitive practices or abuse of the rights conferred by the patent, the right
to the patent may be cancelled, either ex officio  or at the request of an
interested party, subject to a prescribed period of notice.
(l) As already mentioned, Articles 69 and 70 of the PL deal with the subject of
“dependent patents”.  According to Article 69, if a patented invention or utility model
cannot be exploited without infringing an earlier patent, the owner or a licensee may
request the grant of a compulsory licence in respect of the other patent, insofar as it is
necessary to work the patent and avoid infringement. Article 70 lays down the
conditions for the granting of this type of compulsory licence, namely:  the inventionIP/C/W/330
Page 50
claimed in the second patent must involve an important technical advance of
considerable economic significance in relation to the invention claimed in the first
patent (subparagraph (a));  the owner of the first patent must be entitled to obtain a
cross licence on reasonable terms to use the invention claimed in the second patent
(subparagraph (b));  and assignment of the authorized use of the first patent mustinclude use of the second patent (subparagraph (c)).
The other requirements of Article 31 of the TRIPS Agreement concerning notification of the
patent holder as soon as reasonably practical when compulsory licences are granted in situations of
national emergency (subparagraph (b));  the informing of the right holder in cases of public non-
commercial use;  the restriction of compulsory licences for semi-conductor technology to cases of
public non-commercial use or the remedying of anti-competitive practices (subparagraph (c));  and, inpart, use predominantly for the supply of the domestic market are not specifically provided for in the
PL. However, they are mandatory by application of the general principles laid down in the legislation,
such as those requiring that the patent holder be notified or informed, or because the provisions of the
TRIPS Agreement itself so require, since, as has repeatedly been pointed out, these provisions have
been incorporated into the national legislation and form part of domestic law, for example LawNo. 16.671 of 13 December 1994 on semi-conductor technology.
5. Please indicate the term of protection gran ted to patents according to your law?  Does
your law allow use of a patented invention fo r the purposes of marketing authorization
procedure for a copy product before expiry of the term of patent protection?  If yes, pleaseindicate the exact scope and nature of such use.  Please cite the relevant provisions of your law.
Under Article 21 of the PL, the term of protection for patents for inventions is 20 years from
the date of filing of the application.
This use falls within the scope of Article 30 of the TRIPS Agreement which authorizes
Members to provide limited exceptions to patent rights.
There is no express provision for this in the PL.Among the exceptions to the rights conferred by a patent, Article 39(c) of the PL mentions
only acts carried out solely for experimental purposes, including acts anticipating future commercialexploitation, carried out during the year preceding the expiry of the patent.
6. Does your legislation provide for the principle of the reversal of burden of proof in a
process patent litigation?  Please cite the relevant provisions of law.
In accordance with Article 34 of the TRIPS Agreement, Article 101 of the PL establishes that
in civil proceedings if the subject-matter of the patent is a process for obtaining a product, the judicial
authorities have the authority to order the defendant to prove that the process to obtain the product is
different from the patented process, provided that the product is new.
B.
PROTECTION OF UNDISCLOSED INFORMATION
7. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market
authorization of a pharmaceutical or of an agricultural chemical product is protected against
disclosure and against unfair commercial use by a competitor, for example by prohibiting asecond applicant from relying on, or from referring to the original data of the first applicant,
when applying subsequently for market auth orization for a similar product.  Does your
legislation provide for exceptions to this? If yes, under what conditions would such exceptionsIP/C/W/330
Page 51
apply?  Does your legislation set a specific term of protection for undisclosed test or other data
of the first applicant?
Undisclosed information is protected in accordance with Article 39.1 of the TRIPS
Agreement under the heading of unfair competition (Article 10 bis of the Paris Convention).  With
regard to undisclosed test or other data submitted to the competent authority as a condition of
approval of the marketing of pharmaceutical or agri cultural chemical products, provided they meet the
requirements of Article 39.3 of the TRIPS Agreement, they will be protected against unfair
commercial use. Moreover, Article 197 of Law No. 1 7.296 stipulates that officials of the Ministry of
Livestock, Agriculture and Fisheries who obtain information in the course of their inspection
activities must keep that information secret and preserve the confidentiality of any administrative or
judicial proceedings of which they have knowledge.
At the same time, Article 6 of Executive Decree No. 324/999 of 12 October 1999 on the
approval of the marketing of pharmaceutical products stipulates that the applicant must declare the
undisclosed nature of information provided for the purpose of obtaining authorization.
C. ENFORCEMENT
8. Please indicate remedies provided by your legislation which constitute effective
deterrents to infringements of intellectual property rights.
Articles 99 to 102 of the Patent Law contain specific provisions which supplement the general
provisions of civil and procedural law to create a legislative framework that provides a level of
protection consistent with the requirements of Part III of the TRIPS Agreement.
According to Article 99, the patent owner, or ow ners where there are several, may bring civil
proceedings against anyone who infringes his rights.
Article 99 also states that the patent owner may seek compensation for infringing acts carried
out between the publication of the application and the grant of the patent, as well as for acts carried
out before publication if the infringer was aware of the content of the patent before publication.
Article 100 makes those who market or distribute infringing products liable for the injury and
prejudice caused, if there is definite evidence of their knowing that the products infringed patentrights.
Article 101 establishes the above-mentioned reversal of the burden of proof in cases of
process patent infringement.
Article 102 authorizes a licensee to take action to defend the rights deriving from the patent.
Article 103 empowers the judicial authorities to adopt, ex officio  or at the request of a party,
any of the extensive provisional or precautionary measures for which the General Code of Procedure
provides.
Article 104 fixes the time limit for bringing a civil action for damages at 4 years from the date
on which the patent owner became aware of the infringement.
Article 105 allows the true inventor to institute claim proceedings where a patent application
has been filed by someone who is not the inventor, and to request that the patent be assigned to him.
These proceedings are subject to a time limit of 5 years from the date of grant of the patent or 2 years
from the date on which it began to be worked.IP/C/W/330
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Articles 87 and 88 of Tradem ark Law No. 17.011 allow actions for damages to be brought
and prohibit the use of infringing trademarks, while specifying the judicial procedures for ensuring
compliance.
9. Please describe any new initiatives that are planned to improve enforcement of
intellectual property rights in your country, particularly initiatives related to criminal
enforcement.
Copyright and related rights
In the field of copyright, Uruguay has a series of measures for dealing with civil and criminal
infringements.
Where civil proceedings are concerned, Article 51 of the copyright law in force (Law
No. 9.739 of 17 December 1939) stipulates, for both national and foreign works, that “The injured
party, the author or his successor in title may bring a civil action for damages and for the surrender of
all profits and income improperly received by the infrin ger.  In all cases it shall be possible to bring a
subrogatory action, in accordance with Article 1.295 of the Civil Code ….”
Article 47 of Copyright Law No. 9.739 of 17 December 1937, as amended by Article 328 of
Law No. 16.170 of 27 December 1987, stipulates that:  “The unlawfully reproduced copies and any
materials used for reproduction, communication or public performance shall be seized.  As apreparatory measure, the interested party may apply for their attachment while requesting the
competent court for exemption from counter-security, where there is good cause.  In any event, the
judgement shall order the destruction or rendering unusable of the copies and materials seized, if they
are capable of being used, to the extent necessary to prevent unlawful exploitation.  Copies acquired
by third parties in good faith for their personal use shall not be destroyed.”
Where criminal enforcement is concerned, Article 46 of Law No. 9.739 of 17 December
1937, as amended by Article 23 of Law No. 15.913 (B ook Law) of 17 November 1987, stipulates that:
“Whoever publishes, sells, reproduces or causes to be reproduced by any means, in whole or
in part, an unpublished or published work without the written authorization of its author or his
successor in title or its purchaser, in whatever capac ity, or attributes it to a different author, thereby
contravening the provisions of this Law, shall be liable to a term of from 3 months to 3 years
imprisonment.”
Law No. 15.289 of 14 July 1982 created a category of criminal offence that protects producers
of phonograms and/or videograms from unautho rized reproductions.  According to Article 1,
“Anyone reproducing a phonogram or videogram for gain and without the written authorization of its
producer, and anyone distributing to the public or stocking for that purpose the reproductions thus
obtained, shall be liable to the penalty laid down in Article 46 of Law No. 9.739 of 17 December
1937. The same penalty shall be applicable to anyone fixing the live performance of a literary or
artistic work by any means, clearly for the purpose indicated in the previous sentence and without thewritten authorization of the author and the performer, as well as to anyone distributing to the public or
stocking for that purpose the versions thus obtained.”
In relation to criminal enforcement, a draft Law establishing a new regulatory framework for
copyright has been approved by the Chamber of Representatives and is currently being considered inthe Chamber of Senators.
A basically new measure that would be introduced under the criminal law would be that for
which Article 146 of the draft Law provides, namely:  “Whoever, without the authorization of their
author or respective owner protected by this Law, introduces works, performances, phonograms orIP/C/W/330
Page 53
broadcasts into a data storage system for the purpose of reproducing or distributing them shall be
liable to imprisonment for 3 to 24 months.”
Industrial property
As has just been shown, the new Laws on trademarks and other distinctive signs (No. 17.011
of 25 September 1998) and on patents, util ity models and industrial designs (No. 17.164 of
2 September 1999 contain many important prov isions concerning the enforcement of the
corresponding intellectual property rights which supplement and support the general measures derived
from ordinary civil and procedural law.
The criminal provisions relating to patents in Articles 106 and 107 of the Patent Law are as
follows:
Article 106 provides for a term of 6 months to 3 years imprisonment for anyone who infringes
any of the rights protected by patents. It also provides for the forfeiture of the infringing products and
the implements used in making them.
Article 107 increases the term of imprisonment to 15 months to 4 years in the following
aggravating circumstances:  (a) where the infringer was an employee of the patent owner or a licensee
and (b) where he obtained from the latter knowledge of the special methods of making the patented
product.
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