/ Main Changes of New Industrial Property Law

22 July, 2021

Santiago Ortúzar D.
Partner Alessandri

On July 5th, 2021, one of the most important transformations of the last 30 years for the industrial property system in Chile was published. Our Intellectual Property area prepared a list of the main changes that come with the new law, which without pretending to be exhaustive, seeks to guide our clients on the new changes that are coming in terms of trademarks, patents and designs.

As to trademarks:
  1. Olfactory and three-dimensional trademarks are introduced.
  2. The possibility of registering trademarks to cover commercial and industrial establishments is eliminated, leaving us with the 45 classes of the Nice Classification.
  3. New rules are created to regulate collective and certification marks.
  4. It is possible to cancel a trademark registration for lack of use.
  5. It is possible to cancel a trademark registration because its owner has caused or tolerated it to become the usual designation of a product or service for which it is registered.
  6. It is possible to counter-sue for non-use against a trademark that has been quoted as the basis of an opposition and/or nullity action.
As to patents:
  1. A new application is granted a filing date, even if the initial fee is paid at a later date (up to 30 days later).
  2. An additional fee is introduced for any application exceeding 80 pages. (1 UTM for each additional 20 pages or fraction thereof).
  3. Provisional applications are introduced (as in the U.S.), which allow a period of 12 months for the filing of the final application.
  4. Regarding the payment of the second decade of patents, it is allowed to pay on an annual basis or a one-time payment before the expiration of the first decade.
  5. Restoration of the ownership right is allowed within two months after the expiration of the priority period.
  6. Disputes concerning service inventions are transferred to Civil Courts.
  7. In order to remedy an application where a formal requirement has not been complied with, a fee must be paid at the time of filing the application (the new item is the fee).
  8. The following exceptions to the right conferred to patent owners are added:
    • To acts performed privately and without commercial motives.
    • To acts performed for exclusively experimental reasons relating to the subject matter of the patented invention.
    • To the preparation of medicines under medical prescription for particular cases.
    • To the use, on board vessels of other countries, of means constituting the subject of the patent on the hull of the vessel, in the machinery, apparatus and other accessories, when such vessels temporarily or accidentally enter Chilean territorial waters, with the reservation that such means are used exclusively for the needs of the vessel.
    • To the use of means that constitute the subject of the patent in the construction or operation of air or land locomotion apparatus of other countries or of the accessories of such apparatus when they temporarily or accidentally enter Chilean territory.
  1. The term to request supplementary protection is shortened from six months to sixty days from the granting of the patent application and the grounds to request supplementary protection are better regulated.
  2. The “patent usurpation action” was introduced, which seeks to protect the rights of the inventors or their legitimate owner against attempts by third parties to appropriate the patent.
  3. When the international search report has been issued by Chile, at the time of filing the national phase application in our country, we can attach, together with the filing of the national phase application, a written reply to the comments made in these reports and written opinion. In addition, there is the possibility of lowering the expert fee in which Chile acted as ISA/IPEA.
As to designs:
  1. The term of industrial designs is extended to 15 years.
  2. The certificate of deposit of industrial design and drawing is created, by means of which a drawing may be deposited without requesting substantive examination and with certain rights.
Other matters:
  1. The legal concept of industrial secrets was updated.
  2. There is the possibility of paying the fee for applications for annotation of licenses or changes at the time of filing.
  3. It allows Inapi to become a party to defend its position in case of appeals against its resolutions.
  4. Public criminal action is allowed in matters of infringement of industrial property rights.
  5. It allows the service of resolutions by electronic means, eliminating the registered letter.

The effectiveness of the law depends on the enactment of the corresponding regulation by Inapi, which should occur by the end of this year. As always, Alessandri team is at your disposal to clarify any doubts about this important new regulation.