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:
- 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:
- a) Acts performed privately and without commercial reasons.
- b) Acts performed exclusively for experimental reasons relative to the object of the patent.
- c) Preparation of medicines under medical prescription for individual cases.
- d) 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.
- e) 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.
- 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.
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.