/ Reinstatement of PCT rights: an exceptional tool that can save a patent

Reinstatement has been granted on rare occasions in Chile, as it is a real lifeline for inventions that would otherwise remain unprotected in the country. Alessandri recently succeeded in obtaining the reinstatement of rights in a complex case. With the right strategy and a rigorous presentation of evidence, it is possible to reverse very unfavorable situations.

Alan Mella
Associate Alessandri

As a attorney specializing in intellectual property, and from my practical experience advising companies and inventors on patenting processes in Chile and abroad, I have seen how compliance with deadlines and procedural milestones can define the future of an invention.

With this column, I seek to inform inventors and owners about an exceptional tool of the PCT system, available for extreme situations, which can mean the difference between permanently losing a patent or achieving its protection in Chile.

The Patent Cooperation Treaty (PCT) is a tool that allows applicants to protect their inventions in more than 150 countries through a single procedure. Thanks to this treaty, it is possible to gain time to make strategic decisions, such as defining in which countries protection will be sought; accessing an international search report, which offers an overview of the state of the art; and, eventually, a preliminary examination of patentability, which can anticipate the outcome of the patenting process. However, for this protection to extend to each territory, it is necessary to file a national application in each country of interest. This stage corresponds to the national phase.

In the case of Chile, the deadline for entering a PCT application into the national phase is a maximum of 30 months from the first filing or priority date. If the applicant does not file the application within that period, the direct consequence is the abandonment of the application in Chile, losing the possibility of protecting their invention in this territory.

Reinstatement of rights

However, there is an exceptional way to reverse this situation: the reinstatement of rights provided for in Rule 49.6 of the PCT and in Article 117 of our Law 19,039 on Industrial Property.

This provision allows the application to be reactivated if it is demonstrated that the failure to meet the deadline was not intentional and that the failure occurred despite the applicant’s diligence.

This request must be submitted together with the application, providing proof of payment of the respective fee, stating the reasons for the failure to meet the deadline, and providing evidence of the facts stated.

The deadline for filing this request is set out in Rule 49.6 of the PCT, which states that it may be filed within two months from the date on which the cause of the failure to observe the time limit ceased to exist or within 12 months from the date of expiry of the applicable time limit.

Strategic considerations

The restoration of rights in PCT applications is an exceptional tool within the industrial property system. Given its extraordinary nature, INAPI requires the applicant to demonstrate that the failure to comply with the time limit was not intentional and that they acted with due diligence. To this end, the evidence submitted is key: clear, accurate, and verifiable documents must be provided to prove the circumstances that justify the failure to comply with the time limit.

Therefore, it is essential to have specialized advice and specific experience in this type of procedure.