Katzarov’´s Manual on Industrial Property

Patents of Invention

–Law No. 19.039, in force as of September 30, 1991, modified by Law No. 19.996, in force as of December 1, 2005, amended by Law No. 20.160, in force as of January 26, 2007, amended by Law No. 20.569, in force as of February 6, 2012, and amended by Law No. 21.355, in force as of May 9, 2022.
– Decree No. 236 of December 1, 2005, regulating Law No. 19.039, as modified up to January 2007.

Note: a new IP Law 21.355 introducing changes to the current Law 19.039 was published on July 5, 2021 and entered into force on May 9, 2022. The new Law introduces changes concerning patents such as the introduction of provisional patents (valid for 12 months and will serve as a priority for the presentation of the definitive patent), a patent usurpation action to request its transfer, which will protect the rights of true inventors against attempts by third parties to appropriate their inventions. Thus, the true inventor may claim the transfer of the patent obtained by an usurper, together with the corresponding compensation for damages. Further, the period for holders to request supplementary protection is reduced from 6 months to 60 days.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since June 25, 1975.
– Paris Convention for the Protection of Industrial Property, Stockholm Act of 1967, effective June 14, 1991.
– WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), including Trade in Counterfeit Goods, since January 2000. Implementation thereof to internal legislation in Law No. 19.996.
– Patent Cooperation Treaty (PCT), since June 2, 2009.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since August 5, 2011, published in the Official Gazette on November 18, 2011.
– Trans-Pacific Partnership (TPP), since October 5, 2015 (P4).
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 30, 2016.
– Several bilateral free trade agreements, including IP Chapters.

Filing

Applicant: the inventor or his legal assignee whether an individual or a corporation. 

Foreigners and nationals not living in Chile: have the same rights as nationals residing in the country, but they must be represented by a resident patent attorney. 

Protection of foreigners: the same as for nationals. 

Kinds of protection: patents of invention. 

Secret patents: not provided.

Naming of inventor(s): it is compulsory to name the inventor(s).

Notion of an invention: invention is any solution to a technical problem that involves an industrial activity. It may consist of a product or a process, or be related thereto, or a new use, under certain conditions. 

Patentability: an invention is patentable if it is new, involves an inventive step and is industrially applicable.

Novelty: an invention is new when it is not anticipated by prior art, which shall consist of everything disclosed to the public, anywhere in the world, by publication in a tangible form or by sale or marketing, use or any other means, before the date of filing the application in Chile. Prior art encloses prior Chilean patent applications, not published yet at the date of filing the application. Disclosure made within twelve months before the filing of the application shall not be considered for the purpose of determining the novelty of the invention when was authorized or derived from the applicant, made by the applicant or when being the result of abusive and unfair practices suffered by the applicant or inventor. 

Novelty grace period: twelve months.

Inventive step: if for a person having ordinary skill in a relevant art, an invention does not appear obvious or as an evident result from the state of the art. 

Industrially applicable: when the objective of an invention can, in principle, be produced or used in any type of industry. 

Exceptions to protection: (a) discoveries, scientific theories and mathematical methods; (b) plant varieties and animal breeds, or essential biological processes for the production of plant and animal (this provision does not apply to microbiological processes). Microorganisms are patentable; (c) systems, methods, principles or economic and financial, commercial and business plans, or of simple verification and supervision, and those referred to purely mental or intellectual activities or to gambling matters; (d) methods of surgical or therapeutic treatment of the human or animal body, as well as diagnosis methods applied to the human or animal body, except those products destined to put into practice one of these methods; (e) new use of articles, objects or elements known and used for certain purposes and the change in shape, dimensions, proportions and materials of the object requested, unless the new use derives in the solving of a technical problem which did not have an equivalent solution before is new, has inventive step and industrial application, and needs a change in size, proportions or material of the known device, object or element; (f) parts of living beings as they exist in nature, natural biological processes, biological material existing in nature or that can be isolated, including genome or germoplasm. Notwithstanding, processes using such biological material and products directly obtained thereof can be protected, provided that conditions for patentability are fulfilled, biological material is fully described and industrial application is mentioned in the application; inventions contrary to the law, public order and security of the State, or to morality and good habits, human or animal health and lives, or to preserve vegetables or environment.

"Provisional" applications: possible as of May 9, 2022. The new Law 21.355 establishes a 12-month period to file the definitive patent application while preserving the priority date of the provisional application.

Priorities: one year for Convention applications.

Territory covered: the Republic of Chile.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (when an application is to be filed in the inventor’s name) or power of attorney with assignment (when an application is to be filed in the name of a third natural and/or legal person). No notarization and/or legalization required;
2. Abstract, description and claims (Spanish text or foreign text for translation into Spanish);
3. Set of drawings (size: 22 x 33 cm);
4. Certified copy of priority, if any. No legalization is required;
5. Information on current status of priority.

Note regarding POA: with respect to notarization and/or legalization, please note that according to new regulations of the Patent and Trademark Office, upon practical implementation of the Trademark Law Treaty (TLT) towards its harmonization with Chilean general legislation, and in order to avoid putting the parties into jeopardy, all power of attorney documents must be authorized by a Notary Public, being necessary that the person executing the document does so on behalf of the assignee (legalization up to the Chilean Consulate is no longer required). For documents to be filed before other Chilean authorities or courts, the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille) is in full force.

Filing without one or more requirements: possible, but missing formal papers must be filed within a non-renewable term of sixty days after preliminary examination, and if not, the application is considered as not filed.

For a change of name or address:
1. A plain copy of the change of name/address document;
2. Power of attorney, simply signed.

PCT applications:
Filing requirements when Chile is the receiving Office (to be filed in Spanish): 3 sets of originals and must contain at least the following: a Request indicating: title of the invention; applicant; inventor(s); priorities (if claimed). The receiving Office accepts the filing of international applications with requests in PCT-EASY format.

Requests for restoration of the right of priority (PCT Rule 26bis.3): the Office applies both the “unintentional” and “due care” criteria to such requests within two months as of the priority expiry date and subjected to payment of a fee. 

Competent International Searching Authority: European Patent Office, Spanish Patent and Trademark Office or United States Patent and Trademark Office (USPTO). (In case of electing EP or US Searching Authorities, an English translation of the abstract, description, claims, drawings, sequence listings must be filed within one month as of the PCT filing date). 

Competent International Preliminary Examination Authority: European Patent Office, Spanish Patent and Trademark Office or USPTO. 

Requirements for national phase entry in Chile (Time limit: 30 months for both Chapters I and II). Translation required if international application is not in Spanish. 

Minimum filing requirements: full applicant’s data; full inventor(s)’ data; power of attorney; assignment document (no assignment is required for PCT cases having filed a corresponding declaration within International phase unless the National Institute of Industrial Property (INAPI) has reasonable doubt on veracity of the declaration or finds any inconsistency between national phase and PCT application); translation into Spanish of full specification (abstract, description, claims, drawings (if any), sequence listings (if any). 

Required content of the translation: under PCT Art. 22: description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Art. 19), any text matter of drawings, abstract; under PCT Art. 39(1): description, claims, any text matter of drawings, abstract (if any of those parts that have been amended, both as originally filed and as amended by the annexes to the international preliminary examination). 

Term for complying with filing requirements: within three months from the filing date.

Restoration of right of priority by Receiving Office/Designated Office: INAPI, as a Receiving and/or Designated Office, shall restore, at the express request of the applicant, the right of priority in case the Petition for Restoring the Right of Priority has been duly applied for before the Receiving Office, but it has not been accepted by the latter, or the Receiving Office has not issued a pronouncement in this respect. Criteria: INAPI shall grant a Petition for Restoration if it confirms that the failure of meeting the priority time limit occurred despite the due diligence required by the circumstances or that such a failure was unintentional. To that end, the applicant shall accompany along with its Petition the corresponding arguments and supporting evidence. Restoration fee: the equivalent in Chilean pesos of U.S.$ 400.

Reinstatement of rights: in case the time limit to enter national phase of an International Application has lapsed without an application has been filed, INAPI shall reinstate the applicant’s rights on an express prior petition, if it proves that failure to comply with the prescribed time limit was unintentional or it has occurred in spite of the applicant’s due diligence. 

Petition for Reinstatement before INAPI: it shall be filed along with the application, within the time that expires first: (i) two months from the date of removal of the cause of the failure to meet the applicable time limit or (ii) twelve months from the date of the expiration of the thirty-month term counted as of the international application. The petition shall contain the reasons for the failure in meeting the time limit and file of corresponding evidence.  Restoration fee: the equivalent in Chilean pesos of U.S.$ 500.  Observations: in case of rejection of the Petition for Reinstatement, according to Rule 49.6(e) of the PCT Regulations, INAPI shall grant a term to make observations.

Grace period for innocuous disclosures: if claiming priority is not possible and publication has already been made, publications made in the last twelve months will be innocuous to novelty and inventive step requirements, always provided no prior disclosures having more than twelve months have been made. To claim the twelve-month grace period, a written declaration must be filed simultaneously with the filing of the application, by declaring the disclosure(s) and submitting full copies of the publication(s).

Patent Prosecution Highway (PPH): on July 1, 2016 a joint declaration was performed by the participants of the Pilot Program for Accelerated Patent Prosecution (Patent Prosecution Highway-PPH), agreed by the Patent Offices of CHILE, MEXICO, COLOMBIA and PERU in accordance with the Joint Declaration of the Intellectual Property Offices of the Pacific Alliance, signed in Geneva on October 8, 2015 and the Memorandum of Understanding of the Pilot Program for Accelerated Patent Prosecution Highway signed on different dates, both documents signed by the representatives of the previously mentioned Offices.

Moreover, on September 16, 2016 a further Pilot Program of Accelerated Patent Prosecution (PPH) was implemented in its Mottainai and PCT versions, involving the PTO Offices of Argentina, Brazil, Colombia, Ecuador, Paraguay, Peru and Uruguay, in the framework of the System of Cooperation in Industrial Property PROSUR-PROSUL.

In addition to the above, on January 6, 2017 a three-year PPH Pilot Program started with the CIPO of Canada and on August 1, 2017 with the JPO of Japan, both of them in the Mottainai and PCT versions.

In continuation, further Pilot Programs started during 2018 with the CNIPA of China (January 1, 2018), and with the USPTO (November 1, 2018), both having an extension of three years, which may be extended for another three years, if agreed by the parties.

These pilot programs will allow applicants who have obtained a favorable decision of patentability from the Chilean PTO (INAPI), as an Office of First Review (OFR), to benefit from the work done in Chile and request that it be taken into account by the PTOs of the countries involved as Offices of Second Review (OSR).In turn, the PPH Pilot Programs will also allow that applicants filing in Chile, whose patentability has already been examined by any of said prior Offices, to request that INAPI acting as an Office of Second Review (OSR), provide an accelerated examination of the Chilean application. Basically, the requirements for requesting the benefit of accelerated examination established by the PPH Pilot Program are the following:

1. The Chilean application for which PPH is requested and the foreign application are equivalent, that is, that they must have the same earliest date, which can be the same priority date or the same filing date.
2. The foreign application must have been examined substantively by the ORF and have one or more claims considered to be patentable/allowable.
3. All claims presented for examination under the PPH, as originally filed or as modified, must correspond to one or more of the claims found patentable/allowable by the OFR.
4. The national application filed before INAPI has been published in the Official Gazette.
5. INAPI has not begun the substantive examination of the application at the time the PPH request has been filed. Substantive examination starts when an Examiner is appointed.

One of the main features of this agreement will be the possibility of using the product of the international work made in a PCT case developed by the INPI of Brazil and the INAPI of Chile, as ISA/IPEA offices, to benefit from the accelerated patent examination in a PROSUR country.

This program is intended to speed up the Office’s patentability examination procedure and reduce associated costs by avoiding the duplication of administrative actions, patent searches and patent examinations by each Office.

The benefit granted by the PPH Pilot Program does not relieve the applicant of its obligations under the Patent Law of the country in which the accelerated examination request is entered, and that the program is a system which is compatible with the PCT.

PPH Pilot Program will run for a period of three years and may be extended for another year. During this trial period, the countries which are part of the agreement will evaluate its results in order to determine when and how the program should be fully implemented.

Examination

Examination: both formal and substantive. 

Formal examination: once the application is filed, there is a term of ninety working-days to file the certified copy of priority application(s) (if claimed); within a period of six-eight months as of the filing date, a preliminary examination is issued, to verify the compliance of filing formalities; within a period of sixty working days as of issuance, a response to the preliminary examination should be filed to comply with all formalities requested in such action; once all filing requirements are fulfilled the application is accepted for prosecution, and a new period of sixty working days is issued to proceed with the publication in the Official Gazette; once published in the Official Gazette, the application is opened to public inspection, opening a term of forty-five working days to file opposition(s) by any third parties; if no opposition is filed, a Patent Office Examiner is appointed for substantive examination. 

Substantive examination: is carried out by Examiners on state of the art, industrial application, invention novelty and inventive step. Once an Examiner has been appointed, the same has sixty working days to issue a report to the merits of the invention; once the official action has been issued, a new term of sixty working days is given to the interested party to file a response to the same; after the final Examiner’s report, a formal review is made before granting. After granting, the final tax should be paid within sixty working days. 

Accelerated examination: requests for examinations are not applicable to Chile. All actions are carried out within the terms established by the Chilean Patent Law. It is not necessary to request that a resolution is issued (i.e., publication, appointment of official examiners, issuance of official actions, etc.); however, if prosecution is delayed and a resolution has not been issued by the Chilean PTO, applicant may voluntarily file a petition requesting that a pending step is carried out (e.g. if there is a risk that an offender may be affecting applicant’s rights).

Amendment of an application: before first official action (novelty examination). 

Secrecy: applications are kept secret until publication in the Chilean Official Gazette.

Process claims: are allowable. 

Product claims: allowable to cover per seany new product, including pharmaceutical products. 

Rights of prior user: he has no right to obtain a patent. 

Dispute about ownership: any claim regarding industrial property rights, generally, may be brought before the Head of the Department of Industrial Property. Final decisions of the Head of the Department may be brought before the Industrial Property Court within a term of fifteen working days from the notice of the decision. 

Dispute about novelty: same as above. 

Division of an application: possible before first official action concerning unity of invention. 

Opposition: can be filed within a period of forty-five days from the date of publication.

Rendering of evidence: within a term of forty-five days from notification, which can be extended for another thirty days in qualified cases.

Granting and Protection

Delivery of document: a Letters Patent document is delivered about one month after the granting of the patent. The document is issued in digital format only.

Beginning of protection: from the application date. 

Duration: twenty years counted from the application date.

Supplementary Protection Certificate (SPC): the patentee will be able to ask for a supplementary protection term (1) within sixty days as of the granting date if there has been unjustified administrative delays in granting the patent and prosecution has lasted more than five years counted as of the filing date or three years as of the examination requirement; (2) within six months after a sanitary registration has been granted for a pharmaceutical product, the owner will be entitled to ask for a supplementary protection for that part of the patent containing the pharmaceutical product, in case of unjustified delays for granting the sanitary registration (authorization of sanitary registration should last more than one year as of the application date). 

Exception: there will not be considered as unjustified delays those affecting patent applications or sanitary registrations due to (a) opposition or any judicial recourse or action; (b) awaiting issuance of Official Reports by national and international agencies required for prosecution of a patent registration; and (c) actions or omissions from the applicant.

Annuities: no annuities are to be paid for Patents in Chile. However, for granted patents, maintenance fees are due ten years from filing to cover the second ten year patent term.

Patent taxes are paid in three different periods as follows: (1) first payment at the filing of the application; (2) second payment at granting to cover the first ten years of protection (must be paid within sixty days from granting date; otherwise, the application is considered abandoned); and (3) third payment before the expiration of the first decade of protection or, alternatively, can be paid in ten annual installments before the expiration of the respective year. The third payment may be called "maintenance fee" and must be controlled to avoid losing protection for the second ten-year period.

Annuities grace period: within six months following the expiration of the first ten-year term, there is an additional 20% fee per month or fraction of a month, starting from the first month of the grace period. If payment is not made within the indicated period, the patent rights lapse.

Marking of patented goods: must bear the expression “Patente de Invención” or “P.I.” and serial number of the patent. Omission of this requirement does not affect the validity of the patent, but those who fail to meet this provision will not be able to execute criminal legal actions against infringers. 

Amendments of issued patents: not provided for. 

Opposition to granted patents: not provided for before the Patent Office.

Revocation: it is possible to obtain cancellation of a patent within five years counted from the granting date.

Assignment: must be made by public deed duly executed by assignor and assignee and must be recorded with the Chilean Patent Office to be valid before third parties. The deed must include a sum as consideration. 

License: must be executed in the same form as for assignments and recorded with the Patent Office and the Central Bank when payment through official market to a foreign country is involved.

Working: not compulsory.

Patent rights: the owner of a Letters Patent shall enjoy the exclusive right for producing, selling, marketing and importing, or commercially exploiting otherwise, the patented product or process. Protection of a process patent shall extend to products obtained directly from the process. 

Exception: third parties may import, export or manufacture the object of the patent of invention always provided that it is made to obtain a sanitary registration of a pharmaceutical product. 

Counter-exception: the products object of such an authorization cannot be commercialized without the authorization of the owner of the patent. 

Exhaustion of patent rights: international. 

Appeals: trials regarding industrial property generally, shall be brought before the Head of the Industrial Property Department. Final decisions of the Head of the Industrial Property Department can be subject of appeal within a term of fifteen working days from notice of the decision before the Industrial Property Court. IP Court decision can be appealed before Supreme Court.

Modification of Protection after Granting

Cancellation action: can be filed within five years from the date of granting of the patent when (a) the person who has obtained the patent is neither the inventor nor his assignee; (b) the granting has been based on expert’s reports erroneous or obviously deficient; (c) the patent has been granted in violation of the provisions on patentability and requirements thereof according to the Patent Law.

Compulsory licenses: if patentee is involved in monopolistic abuse; in case of public health, national security, no commercial public use, national emergency and other reasons of extreme urgency; in case of depending patents, which cannot be exploited without infringing a prior patent.

Infringements: criminal and civil actions may be brought before the courts. In addition, Law No. 19.912 enacted on November 4, 2003, modifies our Intellectual Property Legislation according to TRIPS rules, incorporating border measures, which definitively improves enforcement in Chile. Finally, Law No. 19.996 protects patents not only by means of criminal actions, but also through civil actions, and allows the patent owner to start injunctions proceedings. Regarding process patents, the new law provides a presumption of infringement of the patent if the product is new. 

Penalties: fines for fiscal benefit; handing over of the infringer’s goods, devices and elements used for the infringement to the patent owner; and payment of costs and damages to the patent owner. 

Enforcement: under Chilean law there are three legal main ways so as to stop an infringement to an intellectual property right: extrajudicial actions; judicial actions (criminal and civil actions); other judicial options (Constitutional emergency actions “recurso de protección” and “recurso de amparo económico”) and nullity actions to be filed before civil courts against acts of the administration (i.e. nullity action on a sanitary registration granted by the Health Service with no subjection to law or by-laws ad hoc); administrative actions; data protection.

Service Inventions

In work and service contracts, the nature of which is the fulfillment of an inventive or creative activity, the authority to request the privilege as well as any possible industrial property rights, will belong solely to whoever ordered the service, unless express stipulation to the contrary. Industrial property rights arising from inventions made by a worker who, according to his work contract, is not obliged to perform an inventive or creative function, will belong exclusively to him. However, if to carry out the invention he has evidently benefited from knowledge acquired within the enterprise and has used means furnished by such an enterprise, then the industrial property right will belong to the employer, who must grant the worker compensation to be agreed between the parties. This same rule applies to a person who obtains an invention that exceeds the object of his commitment. The rights granted to employees or workers on this kind of invention cannot be renounced. Any dispute concerning the above shall be determined by the Industrial Property Court.