Written by Ian Cardenas, Paralegal
On 9 May, the reform of the industrial property law came into force in Chile, bringing key forms to the country’s intellectual property system. This reform came under law N°21.355 (amending law N°19.039 and law n°20.254) and comes with the aim of facilitating the processing of intellectual property rights in the country.
The so-called “Short Law” updated the regulatory framework that was in force since 1991, with special emphasis on the way in which patents and trademarks are developed and processed. Loreto Bresky, National Director of INAPI (the acronym for the Spanish Instituto Nacional de Propiedad Industrial – “National Institute of Industrial Property” in English) said at the time that this modification “will directly benefit our users, because it will provide them with more and better tools when processing their intellectual property rights”.
Long awaited reform
This modification has been one of the most important transformations in the last 30 years to the Chilean intellectual property system. It arrives as a reform that has been awaited by many organisations and which modernises the way in which trademarks and patents are processed.
One of the most eagerly awaited developments of the reform is the introduction of provisional patents “which aims to prevent aspects such as the assessment of patentability or commercial scalability from becoming an obstacle to the protection of innovations”.
In practice, the change should mean that inventors, or entities that initiate any kind of procedure in INAPI, should have 12 months to gather all the information they need, during which time they can consider the viability of the application, feasibility and projection, without the loss of priority.
Another of the most awaited changes relates to trademarks, and involves the incorporation of the requirement of use to maintain the validity of trademark registrations. In practice, this means that the trademark must actually be used in the Chilean market.
The Ministry of Economy also had some comments on the amendment that has already entered into force: “As the Ministry of Economy we have supported from the beginning the processing of this law because we are certain that its implementation will bring good news for Chile, especially for entrepreneurs and innovators who need to be empowered. The regulation will provide INAPI with more and better tools that will directly benefit users, in the context of a process of modernisation of the State”.
Key trade mark changes
- Scent-based and three-dimensional marks are introduced.
- The possibility of registering trademarks to cover commercial and industrial establishments is eliminated, leaving us with the 45 classes of the standard Nice Classification.
- New rules are created to regulate collective and certification marks.
- It is possible to cancel a registration for non-use.
- It is possible to cancel a trademark registration on the grounds that its owner has caused or tolerated it to become the usual designation of a product or service for which it is registered.
- It is possible to counterclaim for non-use against a trademark which has been cited as the basis of an opposition and/or invalidity action.
Key patent changes
- A new application is granted a filing date, even if the initial fee is paid at a later date (up to 30 days later).
- An additional fee is introduced for any application exceeding 80 sheets (1 UTM for each additional 20 sheets or fraction thereof).
- Provisional applications are introduced (similar to in the USA), which allow 12 months of priority in which time the applicant can submit the final application.
- As for the payment of the second decade of patents, it is allowed to pay on an annual basis or a one-off payment before the expiry of the first decade.
- Restoration of the right of priority is allowed within two months after the expiry of the priority period.
- Disputes concerning service inventions are transferred to the civil courts.
- In order to rescue an application where a formal requirement has not been fulfilled, a fee must be paid at the time of requesting the de-filing (the new fee is the fee).
- The period for requesting supplementary protection is shortened from six months to sixty days from the grant of the patent application and the grounds for requesting supplementary protection are better regulated.
- The “patent usurpation action” was introduced, which seeks to protect the rights of inventors or their legitimate owner against attempts by third parties to appropriate the patent.
- When an international search report has been issued by Chile, at the time of filing the national application in-country, a written reply to the observations formulated in these reports and a written opinion may also be provided. In addition, there is the possibility to reduce the expert fee in which Chile acted as the International Searching Authority or International Preliminary Examining Authority.
The amendment brings several key changes to the management of IP in Chile that will both simplify and expedite trademark and patent processes. In particular, the possibility of registration of non-traditional trademarks is an exciting opportunity for both businessmen and entrepreneurs, who will be able to register both smells and three-dimensional trademarks that represent and form their various assets, all in order to differentiate their products or services in the market.
Harris Gomez Group opened its doors in 1997 as an Australian legal and commercial firm. In 2001, we expanded our practice to the international market with the establishment of our office in Santiago, Chile. This international expansion meant we could provide an essential bridge for Australian companies with interests and activities in Latin America, and in so doing, became the first Australian law firm with an office in Latin America.
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