IP expert at the Latin America IP SME Helpdesk
It has been a long way down the road, but it’s finally here: the new IP Law in Chile. At the Latin America IP SME Helpdesk we have been holding this post like forever, until a new Constitution was rejected by the Chilean citizens on 4 September 2022. Had it been approved; this post would have ended up completely different. That clarified, let’s do this!
In Chile, a new IP Law entered into force on 9 May 2022. This new Law modifies the previous one from 1991, providing a transformation within the IP landscape in Chile with benefits to users. In words of Loreto Bresky, INAPI’s Director (the National Institute of Industrial Property -Instituto Nacional de Propiedad Industrial - INAPI): "The approval of this Law constitutes a qualitative leap, which allows us to face with more and better tools, our country challenge of becoming an increasingly relevant actor in terms of innovation, at the international level". And with those words, summarizing how important this new IP Law is for Chile, we start.
The entry into force of the dispositions of Ley Corta No. 21,355 implies the incorporation of unprecedented figures in the Chilean Industrial Property regulation. In this first article about the new IP Law in Chile, we will examine thoroughly what the changes in patents are.
Changes related to patents
1) The incorporation of provisional patents
Any SME who has an invention, but it does not fulfil all the requirements for filing a patent application, may file a provisional application that will be recognized by INAPI for a term of twelve months, upon payment of the corresponding fee. This aims to prevent aspects such as the evaluation of patentability or its commercial scalability from becoming a brake on protecting innovations.
EU SMEs that initiate a procedure can count on 12 months to gather all the necessary information. Time in which the feasibility of a request, its scalability, and projection can be evaluated, without losing the patent’s priority.
2) Restoration of the right of priority
The new IP Law establishes equal treatment for a patent application filed under the Paris Convention and those filed under the PCT agreement when the user asks for the restoration of the right of priority.
3) Abandoned applications new deadline
Applications that fail to comply with the formal requirements for examination are usually “archived” by INAPI. An EU SME requesting the “unarchive” of their application previously declared abandoned by INAPI under the new Law will see that the term to do that is now 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.
4) “Patent usurpation action”
Before the new IP Law came into force, any legitimate patent owner had no other option but to request the declaration of invalidity of the registration.
With the new changes in the IP Law, the inclusion of the patent usurpation action aims to protect the rights of the inventor or its legitimate owner, against attempts by third parties to appropriate the invention. In this way, the owner of the patent may request the transfer of the registration, in addition to the possibility of claiming compensation for damages.
5) Bolar exemption
To overcome the patent issues related to the preparation of, for instance, generic pharmaceuticals before a previous patent expires, many countries put into place legal exemptions (or research exemptions) from infringement for certain acts relating to the development and submission of testing data to a regulatory agency.
Chile already recognised bolar exemption in their previous Law, but just for pharmaceutical products. According to the new IP Law, the rights conferred by patents will not be extended to the acts performed in a private manner and without commercial reasons, purely experimental acts, and preparation of:
- medications under medical prescription for individual cases,
- agrochemistry, among others.
This means that now agrochemistry products too benefit from the bolar exemption when performed in a private manner and without commercial reasons, purely experimental acts, and preparation.
6) The period for holders to request supplementary protection
In general, a supplementary protection request is a legal remedy against unjustified administrative delays which occur while processing a patent application at the National IP Office (in this case: INAPI) pertaining to any technical field, or a sanitary registration at the Public Health Institute (In Chile: ISP). A successful supplementary protection request results in a patent term adjustment equivalent to the period proved as lost due to unjustified administrative delays. If you are an EU SME, do not delay the request, since this period is now reduced from 6 months to 60 days.
It is worth mentioning that this supplementary patent protection extension term cannot exceed 5 years.
7) Payment of fees
For the purposes of filing a patent application, INAPI 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 for 20 extra pages. 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.
Let's wrap the changes up:
Under the new IP LAW
Provisional patent applications
It incorporates the figure of “provisional patent application” for a term of 12 months, after which the definitive patent application has to be filed by the user.
Users could not benefit from the option to have a deferred presentation of the definitive patent application
Restoration of the right of priority
The new IP Law establishes equal treatment for a patent application filed under the Paris Convention and those filed under the PCT agreement
No mention in the previous IP Law
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 deadline for requesting “unarchive” of an abandoned application was of 120 days from the abandonment date.
Patent usurpation action
Thanks to the patent usurpation action, the owner of the patent may request the transfer of the registration, in addition to the possibility of claiming compensation for damages.
Any legitimate patent owner had no other option but to request the declaration of invalidity of the registration.
It is foreseen that the bolar exemption applies to Pharmaceuticals, and also agrochemistry products, among others.
Just pharmaceutical products could benefit from the bolar exemption.
Period for supplementary
The period for holders to request supplementary patent protection is now 60 days. It cannot exceed 5 years, provided an unjustified administrative delay is demonstrated.
This period used to be of 6 months
Payment of fees
- Any patent application exceeding 80 pages must pay, together with the filing fee, an additional fee under the terms established by the law.
- The first decade of the patent has to be paid all at once. Regarding the second 10-year part fees, users are now allowed to pay either on an annual basis or all at once.
- No previous reference to pay additional fees for exceeding pages.
- The first decade of the patent had to be paid all at once too. But, regarding the second 10-year part fees, users had also to pay that part all at once (only option).
New Guidelines for Patents and Utility Models
INAPI has recently updated its patent examination guidelines, including all the above-mentioned changes, providing guidance and clarity to users. Should you be interested, check the full document (in Spanish) on INAPI’s website: https://www.inapi.cl/docs/default-source/2022/centro-documentacion/directrices/patentes/directrices_de_examen_invenciones_y_mod_uti_20220531.pdf?sfvrsn=b94a767_2
To be always updated with any IP changes in Latin America...
The Latin American landscape is constantly changing and improving not only nationally, but also at an international level. If you would like to be up to date with the latest news about IP in Chile, or any country in Latin America, and you happen to have questions, please let us know by making use of our Helpline. It’s free, fast (maximum 3-working days), and you will get an answer from our IP experts back in English, French, Italian, German, or Portuguese (upon experts’ availability).
- Publication date
- 16 September 2022