Modifications to Chilean IP Law


31. August 2021

By Marco Euroza. Lawyer. 

Earlier last month, on July 5th, the Chilean Congress approved Law No. 21.355 comprising modifications to the previous Law, Law No. 19.039. According to the Chilean Congress, amended provisions provide greater protection and enforcement of the industrial property rights and users who rely on the system. Among the modifications incorporated into the law, the following stand out:

1. Electronic notifications

  • Opposition notification to the registration is authorized by electronic means. All notifications related to the procedure for granting an industrial property right, oppositions, nullity, and, in general, with any matter that is followed before the Institute, will be made by the daily state.

2. Payment of Fees:

  • For the purposes of filing a patent application, the Institute is permitted to grant a filing date even if the respective fee payment has not been credited.
  • A fee for excess sheets is incorporated into patent applications. Thus, any patent application exceeding 80 sheets must pay, together with the filing fee.
  • Additional payment facilities for the maintenance of rights are established for the second decade of patents, the second five-year period of utility models and layout designs or topographies of integrated circuits, and the second and third five-year period of industrial designs.
  • The time limit and procedure applicable to the renewal of trademarks are modified.
  • It is established that the amounts paid to INAPI are not refunded.

3. Registration, use, and other procedures relative to trademarks:

  • The figure that allows the registration of commercial or industrial establishments as trademarks is eliminated.
  • Additional signs are allowed to be registered as trademarks. For example: odors or three-dimensional shapes.
  • The existing regulation for collective and certification marks is updated.
  • Rights conferred to trademark owners shall not impede the exercise of the right of any person to use, during trade, his name or pseudonym or the name of his predecessor in the commercial activity, except where that name is used in a manner that misleads or confuses the public.
  • Grounds for total or partial revocation of a trademark registration are incorporated. For example, for its non-actual and effective use under the circumstances and conditions established by law.
  • Counterfeiting of trademarks is punishable in the cases indicated by law, with penalties of minor imprisonment in the minimum to medium degree.

4. Patents for Inventions:

  • A provision is incorporated that allows any person who has an invention, but who is not yet able to comply with all the elements of a patent application for filing, to file a provisional patent application, which the Institute will recognize for a period of twelve months, upon payment of the corresponding fee.
  • It is established that the patent does not confer the right to prevent third parties from importing, exporting, manufacturing, producing, or using the material protected by a patent for the sole purpose of obtaining the registration or marketing authorization of a pharmaceutical, chemical-agricultural, or other product. The law also incorporates acts and situations to which the right conferred by the patent does not extend.
  • An action of patent usurpation is added. This action grants the right for the legitimate owner to request, before the civil judge and in accordance with the summary procedure established in the Code of Civil Procedure, the transfer of the registry and the corresponding compensation for damages against the person who has obtained it without having the right.
  • A time limit is established for the supplementary protection of patents in cases indicated in the law, but which may not be granted for a term exceeding 5 years.
  • For the registration of industrial designs, a new procedure is incorporated that speeds up their processing.

5. Service Inventions.

  • The law establishes that the controversies that arise on them will be resolved briefly and summarily by the ordinary justice, ceasing to be known and resolved by the Industrial Property Court.

6. Trade Secret.

  • Its concept is expanded under certain requirements that must concur.

7. Others.

  • Changes in the regulation applicable to geographical indications and appellations of origin.
  • In the event of counterfeiting, the law authorizes the replacement of damages by a single compensatory sum determined by the court in relation to the gravity of the infringement, which may not be more than 2,000 monthly tax units (UTM) per infringement.

8. INAPI Faculties.

  • It is authorized so that it can also collect funds by national and international agreements.
  • In judicial matters, in appeals against final decisions handed down in proceedings before the Institute, it is granted the status of party for all legal purposes.

Finally, approved modifications will enter into force as of the publication of its regulations, which must be dictated within a period of 6 months.

Sources: Biblioteca del Congreso Nacional de Chile, Ley 21355.

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