/ Progress on the intellectual property bill in Congress

April 24, 2020

Francesca Rodríguez S.

Senior Associate Alessandri

In July 2018, the National Institute of Industrial Property (Inapi) proposed a bill to partially amend the Chilean Industrial Property Law (No. 19.039) by including new provisions that would pave the path for the self-execution of several international treaties (The Madrid International Trademark System, the Singapore Treaty on the Law of Trademarks, the Hague International Design System, the Locarno Design Classification Agreement and the Patent Law Treaty and the Strasbourg Agreement on Patent Classification) to which Chile must adhere, as part of the future implementation of the so-called TPP-11 (Comprehensive and Progressive Agreement for Trans-Pacific Partnership, CPTPP) and the ongoing renegotiation of the Free Trade Agreement signed with the European Union in 2003.

This bill encompasses several provisions that tend to bring the Chilean Industrial Property Law up to date in accordance with international standards, such as: i) broadening the trademark definition so as to cover the olfactive and tridimensional ones; ii) new rules governing the collective and certification trademarks; iii) incorporation of provisional applications for patent rights; iv) clarifications on the maximum patent term extension to get via a supplementary protection request; v) new patent right limitations, namely, private acts with no commercial purposes, experimental and educational acts and the preparation/manufacture of drugs under medical prescription in certain individual cases; vi) extending the validity term of industrial design registrations from 10 years to 15 years; vii) setting up a new abbreviated procedure for granting industrial design registrations without substantive examination; viii) updating the legal concept of trade secrets; and ix) allowing Inapi to become a party in appeal procedures, among others.

The bill was made available to Industrial Property stakeholders for a brief comment period by the end of September 2018. The Chambers of Deputies delivered the bill to the Senate in March 2019 for an indications period. Some of the indications made by the Economic Commission of the Senate were aimed at amending the rules concerning the patent compulsory licenses and instituting the imprescriptibility of cancellation actions against patents granted in a context of bad faith. In November 2019 those indications were dismissed and in April 2020, the bill is reviewed by the Treasury Commission of the Senate, as part of its ongoing second constitutional review before delivering it to the President for promulgation and ulterior publication in the Official Gazette.

To see a comparative chart showing the text of the current IP Law, the changes proposed by the bill and those derived from the indications made during the legislative process (only in Spanish), click here.