Chile: Changes Introduced In Patents And Designs By Chilean Draft IP Law

Last Updated: 16 January 2019
Article by Marta García

On October 2, 2018, a new draft law was sent to the Chilean Congress to update the Law No. 19,039 on Industrial Property, the Law No. 20,254, which establishes the National Institute of Industrial Property and the Criminal Procedure Code.

The main changes introduced by the draft law regarding patents and industrial designs are the following:

Patents

Provisional patents

The draft law includes the possibility of applying for provisional patent applications, which will provide applicants with a term of 12 months to proceed with the filing of the corresponding definitive application.

Fees for additional pages

The draft law establishes that any patent application exceeding 50 pages must pay, together with the filing fee, an additional fee of 1 Monthly Tax Unit – which at the end of 2018 was equivalent to approximately 71.5 USD – for every 20 additional pages or fractions of pages.

Limitation of supplementary protection

According to Article 53 BIS of Law 19,039, any patent (in any technical field) can be eligible for supplementary protection, provided that:

– the grant of the patent exceeded five years from filing or three years from the request for examination, whichever occurs after; or

– the grant of the marketing authorization exceeded one year since the request was filed.

It is also established that the supplementary protection must be requested within six months after patent grant or after marketing authorization grant, as long as there has been an unjustified administrative delay.

The current legislation states that only the period proven as unjustified will be granted and does not establish a maximum extension that can be granted.

The draft law establishes a reduction from the current six months to 60 days from patent grant or from marketing authorization grant to request the supplementary protection.

Moreover, the draft law limits the supplementary protection that can be granted to a maximum term of five years.

Exceptions to patent rights

A series of exceptions or limitations to the rights granted by a patent to its owner are introduced by the draft law to Article 49 of IP Law No. 19,039, stating that the rights conferred by a patent will not be extended to:

  1. Acts performed privately and without commercial reasons.
  2. Acts performed exclusively for experimental reasons relative to the object of the patent.
  3. Preparation of medicines under medical prescription for individual cases.
  4. Use on foreign vessels of means which are the object of the patent, when they temporarily or accidentally enter into Chilean territorial waters, except that said means are used exclusively for the needs of the vessel.
  5. Use of means that are the object of the patent in the construction or functioning of foreign air or land vehicles or of the accessories of said vehicles, when they temporarily or accidentally enter into Chilean territorial waters.

Patent usurpation

According to IP Law 19,039, if a patent has been registered by a person who does not have the right to do so, the only remedy available for the legitimate owners of said invention is to request the revocation of said patent. Therefore, the legitimate owners of the invention do not currently have the option to recover their patent right.

In order to overcome said deficiency, the draft law proposes to establish a "patent usurpation act," according to which the legitimate owner of a patent will have the right to request the transfer of the patent and the corresponding damages, when said patent has been registered by a person who does not have the right to do so.

Industrial designs

Expedited procedure

The current registration process for industrial designs in Chile requires substantial examination and takes about one year, which is an excessively long term due to the dynamic nature of the design industry.

In order to accelerate registration, the draft law introduces an "expedited procedure", which must be explicitly requested by the applicant, and which does not involve a novelty assessment. Moreover, the current non-expedited procedure involving a novelty assessment may still be used by the applicants.

In the new expedited procedure, if no formal objections are raised, the applicant will be granted a "certificate of deposit". The substantive examination can still be requested at a later stage by either the certificate owner or a third party.

Extension of term of protection

The current IP law establishes a maximum term of protection for industrial designs of 10 years, which cannot be extended.

The draft law proposes a protection period of five years, which can be extended for two additional periods of five years, until a maximum of 15 years.

It is also established that the owners of designs granted before the entry into force of the new law, which are still within the validity term of 10 years, my request an extension of validity for up to an additional term of five years.

Maintenance fees

According to the current IP Law 19,039, maintenance fees for patents, utility models and industrial designs must be paid for periods of 5 or 10 years. This means that patent and design owners have to pay a fee covering a long period of time, during which they might lose interest in the corresponding right.

In order to improve the above situation, the draft law introduces the option of paying annual maintenance fees for patent and industrial designs.

Source: https://www.camara.cl

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
 
Email Address
Company Name
Password
Confirm Password
Country
Position
Industry
Mondaq Newsalert
Select Topics
Select Regions
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions