By Miriam Silvestri. Patents Engineer.
A new IP Law (N° 21355) came into force in Chile on May 9, 2022, modifying some articles of the previous one (19039 dated 1991, and its subsequent amendments)
This new law introduces important modifications aimed at perfecting the system for the IPRs protection, improving its safeguarding and observance, facilitating the processing, contributing to its harmonization with international standards
The most relevant changes introduced are as follows:
Notifications made by electronic means
It is authorized in the respective procedure, that the notification of opposition to the registration of an application is made by electronic means defined by the applicant. In addition, it is established that all notifications related to the granting procedure of an industrial property right, oppositions, nullity and, in general, with any matter before the Industrial Property Institute, shall be made by daily statement.
Payment of Fees for patents and trademarks
– For the purposes of filing a patent application, the PTO will grant a filing date even if the respective fee payment has not been credited, under the conditions indicated by law.
– In patent applications, a fee per excess page is incorporated. Thus, any patent application exceeding 80 pages must pay, together with the filing fee, an additional fee under the terms established by the law. The pages of the application corresponding to lists of sequences are not taken into account to determine the respective fee.
-New Modalities are established for the payment of fees at the holder’s choice, when they correspond to the second ten-year period for patents, the second five-year period for utility models and layout-designs or topographies of integrated circuits, and the second and third five-year periods for industrial drawings and designs.
– The term and procedure applicable to the renewal of trademarks is modified.
– It is established that the amounts paid to INAPI for fees are not refundable.
Changes about Trademarks in Chile
– The legal figure that allowed registering commercial or industrial establishments names as trademarks is eliminated.
– New signs are allowed to be registered as trademarks. For example: words, logos, figures and sounds, other types of trademarks may be registered, such as three-dimensional and olfactory trademarks.
-The existing regulation on collective and certification trademarks is updated.
– It is established that the rights conferred to the owners of registered trademarks shall not prevent the exercise of the right of any person to use, in the course of commercial operations, his name or pseudonym or the name of his predecessor in business, except when said name is used in such a way that it leads to an error or confusion to the public.
In addition, the owners of registered trademarks that incorporate geographical, generic or descriptive concepts may not prevent the use of such concepts when this is intended to inform the geographical origin, gender or other descriptive characteristic of the product or service, except when it leads to a error or confusion to the public. Therefore, the new Law allows, for the first time, certain legitimate uses of third-party trademarks.
– The new law incorporates grounds for total or partial expiration of a trademark registration, first, produced by its real and effective non-use under the circumstances and conditions established by law and seconds in the case of the genericity of the brand; that is, when the trademark loses its distinctive capacity because its owner has caused (or allowed) it to become the name of a product or service
– In case of trademark counterfeiting, the law authorizes the substitution of damages for a single compensatory sum determined by the court in relation to the seriousness of the infringement, which may not exceed 2,000 UTM per infringement.
– New legal figure of provisional application is incorporated. Hence, any person who has an invention, but it does not fulfil all the requirements for filing a patent application, may file a provisional application, which will be recognized by the PTO for a term of twelve months, upon payment of the corresponding fee.
Restoration of the right of priority
The applicant may request the restoration of the priority right for patent applications filed under the provisions of Paris convention into the same term as that applied to patent application filed under the provisions of PCT agreement.
Consequently, the new Law establishes equal treatment for a patent applicant filed under the Paris Convention and those filed under the PCT agreement.
The term for requesting “unarchive” applications declared abandoned by the PTO is reduced. The new deadline for requesting “unarchive” of an abandoned application will be 45 days from the abandonment date without losing the right of priority. The new regulation incorporates the payment of a fee of 2 UTM to request the unarchive.
Exceptions to the patent rights
Exceptions to the patent rights are regulated. In this respect, it is established that the patent does not confer the right to prevent third parties from importing, exporting, manufacturing, producing or using the matter protected by a patent with the sole purpose of obtaining the registration or sanitary authorization of a pharmaceutical, chemical-agricultural or other product. Likewise, the law incorporates the acts and situations wherein the right conferred by a patent invention is limited. Thus, Bolar exception regarding agrochemical products is incorporated.
Patent usurpation action
– A patent usurpation action is contemplated. This legal action grants the right for the legitimate owner to request, before the civil Court and in accordance with the summary procedure established in the civil Code, the transfer of the registration and the corresponding compensation for damages against a person who has obtained it without having the legitimate right.
Supplementary patent protection extension
– The period for holders to request supplementary protection is reduced from 6 months to 60 days . However, this supplementary patent protection extension term cannot exceed 5 years, provided an unjustified administrative delay is demonstrated.
Industrial drawings and designs
A new procedure is incorporated in order to expedite up the granting processing to fan industrial drawing and design. A new “abbreviated procedure” is established as an alternative to the conventional procedure, under which a “deposit certificate” of an industrial drawing or design is granted to the applicant, without the need for the substantive examination of the application. However, the substantive examination may be requested in the future either by the holder of the registration or by a third party.
The deposit certificate issued on the basis of this new procedure is granted only after the verification of the compliance with the formal requirements. Once the deposit certificate is granted it must be published, and it Will be valid for a term of 15 years, within which the substantive examination may be requested.
The deposit certificate only accredits the content of an industrial design or drawing with respect to its holder, but does not entitle the holder to exercise the actions pertaining to industrial property rights, for which the respective registration must be obtained once a substantive examination phase is carried out and approved. The Law extends the term of legal protection of industrial designs and drawings, up to 15 years from the filing date of the respective application.
The holder of an industrial design or drawing registration may opt for annual payments of the maintenance fee as from the expiration of the first five-year period. Hence, the right subject to this payment modality will last as many years as those in which the maintenance is made, up to a maximum of 10 years over the five-year period initially paid.
The law establishes that disputes arising from them will be resolved briefly and summarily by the ordinary courts, and they will no longer be heard and resolved by the Industrial Property Court.
The trade secret definition is broadened under certain requirements that must concur copulatively.
Geographical indications and designation of origin
Changes in the regulation applicable to geographical indications and designation of origin are implemented.
New attributions of the PTO
The Law grants to the PTO status of a party for all legal purposes during appeal proceedings filed against the final resolutions issued by the same.