/ Improperly obtained patents may be recovered

Law 21,355 allows the owner of an invention to request, through a summary proceeding, the forced transfer of the patent registered by a third party with no rights over it.

Francisco Silva von Moltke
Associate Attorney
Alessandri

Every large company that invests in technologies is concerned about keeping its new developments under commercial secrecy or registering its innovations before the National Institute of Industrial Property (Inapi), in order to materialize such work in a tangible result for its company and to prevent third parties from taking advantage of its efforts and imitating its technology.

However, one of the issues that concern companies is the fact that a third party imitates their invention and commercializes it in the market without their authorization. Although it is uncommon for this to happen, there are some cases in which an employee of the company, with the aim of getting an advantage or due to a disagreement with his employer, has tried to appropriate the technology on which he has been working, requesting in his name or in the name of a third party the registration of the corresponding invention before Inapi.

The old Industrial Property Law allowed the annulment of a patent registered by a third party without rights over it and thus eliminate it from the registers. After the annulment, the content of the invention passed into the public domain. This discouraged this type of action and encouraged the true owner to negotiate with the third party in bad faith.

Fortunately, one of the matters that Law 21,355 solves, by adding Article 50 bis to Law 19,039, is that it allows the true owner of an invention to request, through a summary proceeding before a Civil Court, the forced transfer of the patent, in order to avoid the situation described above after the annulment. The article, which has not been sufficiently disseminated, states:

“Article 50 bis. – In cases where the person who has obtained the patent has no right, the legitimate owner shall have the right to request the transfer of the registration and the corresponding compensation for damages. This action may be exercised during the entire term of the registration. It shall be heard by the civil court judge, according to the general rules of jurisdiction and in accordance with the summary proceeding established in the Code of Civil Procedure“.

Although the ideal is for companies to have adequate safeguards for their technology, such as well-drafted contracts with confidentiality clauses, this new proceeding gives companies peace of mind if these barriers are breached.

This change comes to protect the inventors and legitimate owners, who will know that, if they have the corresponding evidentiary background, they will be able to recover their invention and keep it in their name, for as long as it lasts and with the economic benefits that this may entail.