/ Inapi’s Short Law that modernizes the current Industrial Property Regulations was published
July 8, 2021The reform seeks to promote innovation and entrepreneurship through changes that facilitate the processing of industrial property rights, update processes and contribute to the harmonization of international standards.
On July 5th, 2021, Law No. 21,355 was published in the Official Gazette, which amends Law No. 19,039, on Industrial Property, and Law No. 20,254, which establishes the National Institute of Industrial Property.
The national director of Inapi, Loreto Bresky, described the recent approval of the Short Law as one of the most important transformations of the last 30 years for the industrial property system in Chile.
It is a reform widely desired by the public agency, which modernizes the regulatory framework dating from 1991, mainly in the way trademarks and patents applications are processed.
One of the most important advances is the introduction of provisional patents “which aims to prevent aspects such as the evaluation of patentability or their commercial scalability from becoming an obstacle to the protection of innovations”, said the authority of the agency.
This change will mean that inventors, universities, research centers and companies that initiate a procedure will have 12 months to gather all the necessary information. In this time it will be possible to evaluate the viability of an application, its scalability and projection, without losing priority. In other words, it will prevent many inventions from being kept in folders.
Our partner Santiago Ortúzar, emphasizes that the Chilean Industrial Property Law has undergone one of the main transformations of the last decades and that it is up to date with the demands of a modern economy. “With the new law we consolidate Inapi as a reference in Latin America as a public agency in charge of the protection of industrial property. In addition, our country is putting itself at the level of developed countries. As rarely before, the legislator enacted a law that does not lag behind international trends, but rather puts us at the forefront of IP protection. Although there is still a long way to go in strengthening the institutions that protect this matter, we can proudly say that Chile far exceeds the minimum requirements”, he says.
Another important amendment is called “patent usurpation action”, which aims to protect the rights of the inventor or its legitimate owner against attempts by third parties to appropriate the invention. In this way, the owner of the patent may request the transfer of the registration, in addition to the possibility of claiming damages. This is in contrast to the current legislation in which the legitimate owner has no other option but to request the nullity of the registration.
Innovators will also benefit from annuity payments, as an alternative measure to the ten-year or five-year system, depending on the type of right. “In this way, the strategy to be used for their protection will be key, in which it will be necessary to consider whether it is convenient to pay for a long period of time, or to analyze every year the convenience of doing so, according to the impact of the innovation or if the irruption of new technologies that could reduce competitiveness is projected”, highlighted Loreto Bresky, national director of Inapi.
On the other hand, trademarks will also undergo important changes. One of the most awaited by Inapi is the incorporation of the requirement of use to maintain the validity of trademark registrations. The purpose of this is to ensure that the exclusive and excluding rights of trademarks make sense, that is, that the trademark is actually used in our market to identify products or services.
Among the news of the Short Law is the incorporation of different types of trademarks, through a new conceptual definition that broadens the possibilities by excluding the requirement of graphic representation, including three-dimensional trademarks. The director of the entity said that “in this way it will be possible to register three-dimensional trademarks, such as the packaging of a new bottle with sufficiently differentiating attributes, could be protected as a distinctive sign in Chile, which opens up a wide range of possibilities for users”.
“As Ministry of Economy we have supported from the beginning the processing of this Law because we are fully certain that its implementation will bring good news for Chile, especially for entrepreneurs and innovators who need to be empowered. The regulation will provide Inapi with more and better tools that will directly benefit users, in the context of a process of modernization of the State”, said the Minister of Economy, Lucas Palacios.
This law will become effective as of the publication of its relevant Regulation, for which there is a term of six months from the publication of the Law in the Official Gazette, dated July 5th, 2021.