New Guidelines for the Examination of Patent and Industrial Designs Applications in Chile
Summary: The Patent Office in Chile (INAPI) updated the New Guidelines for the Examination of Patent Applications and created a separate document for Industrial Designs. Regarding Patents, it introduces the figure of Provisional Patent Application and establishes its requirements. Likewise, it redefines relevant aspects of the procedure of Divisional Applications. On the other hand, in matters of Industrial Designs, the abbreviated procedure figure is introduced, and its term of validity is modified.
The new Intellectual Property Law No. 21,355 entered into force on May 9, 2022, and afterwards, the INAPI (National Institute of Industrial Property) implemented modifications in the internal legislation. In accordance, on June 8, 2022, was issued the New Guidelines for the Examination of Patent Applications and Industrial Designs, in separate documents, in order to guide and provide clarity to users regarding the internal practices of this office in the patent prosecution.
The guidelines on Patent matters define the procedure of the new figure of Provisional Patent application, in which the applicant can file the same in English and Spanish which might be filed even when the applicant does not provide all the documents required by the patent office. Likewise, it provides 12 months after the filing date of the Provisional application for the applicant to file a definitive patent application and said application will be considered the priority.
Regarding Divisional applications, it establishes that although Divisional applications in cascade (divisional of divisional) are allowed under local legislation, these can only be filed if the original application is under prosecution and if the Divisional does not extend the disclosure made in the original application.
With respect to the term of validity, this will be equivalent to the validity of the original application regardless of whether it is granted or not.
Additionally, the New Guidelines establish that an extra fee equivalent to USD 80 must be paid along with the initial filing of the patent application for each additional 20 sheets from sheet 81 of the patent application.
On the other hand, in the matter of Industrial Designs, the term of its validity was modified, which went from 10 years to 15 years. In addition, and to maintain its validity, the applicant must pay a maintenance fee every 5 years.
A new figure was also created which summaries the procedure for Industrial Designs. This figure grants the holder a Certificate of Deposit, in which the Patent Office will carry out a preliminary examination, aimed to verify the formal filing requirements without being subjected to a technical examination. This Certificate accredits the content of the registration with respect to its owner but will not entitle the applicant to pursue any protection to the Industrial Design.
Finally, it is important to highlight that the New Guidelines that separate Patents and Industrial Designs for the first time, allow the documents to describe the new legal provisions clearly and precisely in depth. Therefore, it is expected that this model will be followed in different LATAM countries in order to update their guidelines.
Author: Nichole Silva I [email protected] I Intellectual Property / Patents
