/ New Inapi Instructions on Patents Superseded Exempt Resolution No. 137 of 2022

Daniel Sacasas
Patent Engineer
Alessandri Abogados

On December 5, 2023, a new patent prosecution instruction was published in the Official Gazette, which superseded the instruction approved by exempt resolution No. 137 of 2022. It will enter into force on January 1, 2024.

Highlights

• When the restoration of the priority right is requested in the PCT international phase and the Receiving Office approves, the applicant must file a document in the local phase in Chile for Inapi to validate the situation.
• Regarding the PCT Search Report, the applicant must provide the non-patented documents mentioned in the International Search Report and the International Preliminary Examination Report, as well as the translation of any document requested by Inapi.
• With respect to innocuous disclosures, disclosures made in the twelve months prior to the application may be considered innocuous if:

1. they were made, authorized or derived from the patent applicant; or
2. were made due to abuses and unfair practices against the applicant.

• Additionally, if the applicant claims innocuous disclosures under Art. 42 “LPI”, it must provide details of the facts and circumstances that demonstrate that the disclosures are due to abuses and unfair practices, so they will not be considered in the analysis if the claim is accepted.
• The new instructions include details on the processes of provisional patent application, final application at Inapi, as well as international PCT application.
• Regarding the suspension of publication, Inapi may authorize the suspension of the local publication for longer periods than usual (18 months or 6 months, as the case may be), if the applicant so requests and if this benefits its legitimate interests abroad.
• Regarding the expert stage, the expert has the authority to request the applicant, via e-mail, to provide new documents, previously announced and not attached, or incomplete or illegible documents. Additionally, when answering expert reports, the applicant must explain the amendments made to the specification and/or claims, indicating page number, modified paragraph and accompanying a document with marked change control.
• Regarding the amendment of the application once the expert or decisional stage is concluded, it is established that, if the applicant wishes to make amendments due to the lack of unity of invention, it must file the corresponding divisional applications while the original application is still pending at Inapi. However, in this case, Art. 39, third paragraph of the Regulations cannot be invoked.

Alessandri Abogados’ team of attorneys and industrial property agents is highly specialized in the patent prosecution process, both nationally and internationally. We keep ourselves updated with the new instructions in order to continue serving each of our clients with efficiency and speed.