New Intellectual Property Law in Chile
Summary: The Law No. 21.355 modifies the current Intellectual Property Law No. 20.254. This new provision introduces modifications regarding Patents and Industrial Designs. In the matter of Patents, modifies the PTE request terms, and introduces the figure of Provisional Patent Applications. On the other hand, in relation to Industrial Designs, this Law modifies their validity term and creates the figure of Summary Procedure for Industrial Designs.
The new Intellectual Property Law No. 21.355 will become effective from January 5, 2022.
Regarding Patents, this new provision modifies the term from 6 months to 60 days, for the applicant to request a Patent Term Extension. The PTE refers to the additional time that can be added to the Patent term due to the unjustified administrative delays from the Chilean Patent Office (INAPI – National Institute of Industrial Property).
In addition, the new Law introduces the figure of Provisional Patent application, in which the application does not have to comply with all requirements as the non-provisional applications. With the Provisional application, the applicant will be able to file a non-provisional application within the following 12 months and will be able to use the same as a Priority application for any other patent applications to be filed in a Paris Convention country member.
Moreover, this provision creates a judicial civil action intended for a legitimate inventor to claim a Patent right from a third party that had registered his/her right without being entitled to the same. This action must be submitted during the validity of the Patent and the competent authority to review these actions will be the Ordinary Civil Tribunals.
On the other hand, regarding Industrial Designs, this Law modifies the validity term, which is extended to 15 years. The applicant must pay a maintenance fee every 5 years.
Furthermore, a summary procedure is created, for which a Deposit Certificate will be granted for the Holder, without the need to practice a technical examination. This fast-track procedure gives the applicant the opportunity to obtain the Deposit Certificate by complying with the formal documentation. Once the Deposit Certificate is granted, the Industrial Design will be published and will have a validity of 15 years counted from the initial filing date. During this time, the Holder or any third party can request the technical examination.
Additionally, the Deposit Certificate will only prove the content of the design with respect to the Holder but will not entitle the applicant to pursue legal actions in order to enforce his legal Intellectual Property rights.
In case the Holder wants to pursue legal actions against possible infringers, it would be necessary to comply with the complete registry process and submit the Industrial Design to the technical examination.
Finally, to sum up the mentioned before, it is important to highlight that the regulation of this legal provision has not yet been published. Although we hope this information can be useful for upcoming cases and strategies.