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Several amendments to the Patent law have been published in the Official Gazette of 11 March 2005 amending the present law with some significant changes, regarding patents, which are the following in the order in which they were published.

1. Shortening of term in patent prosecution. First of all, the term of opposing an application for a patent, utility model, industrial design, integrated circuits, has been reduced from 60 to 45 days.
Likewise, the term for replying to an Examiner's report has been reduced from 120 days to 60 days, extendable for once to an additional 60 days.

The term for replying to an opposition is now of 30 days instead of the 60 days that were in force up to now. All these terms are reflected in business or working days excluding Saturdays, Sundays and holidays.

2. Official taxes or fees. The filing of an application for a patent, utility model, industrial design and integrated circuits is subject to a payment of one Monthly Tax Unit, which at present is equivalent of about US$55.

Once a patent has been granted, an additional payment of two Monthly Tax Units for the first ten years of grant of patents and the first five years in the case of utility models, industrial designs and integrated circuits, must be paid.

The same amounts must be paid to keep the protection in force for the remaining 10 or 5 years.

3. Prior art. Prior art is everything that has become known or accessible to the public anywhere in the world through a publication, sale, distribution or use or any other means prior to the date of the filing of the application in Chile or of the priority granted similar to that of the Paris Convention of one year. Similarly the “revalidation” of already granted patents has been eliminated, there could be considered as prior art in respect of equivalent application in Chile.

4. Reversal of the burden of proof. In case of civil actions for infringement of method or process patents, the judge may reverse the burden of proof and demand that the defendant, in case of an identical product, prove that the method of production of said product is different from the one patented by the plaintiff.

5. Non patentable matters. Besides those already existing in the law, a specific provision has been established prohibiting the patenting of essentially biological processes for the production of plants and animals, except micro-biological processes. An essentially biological process consists only in natural phenomena such as crossing or selection.

The possibility of patenting a new use of known articles, objects or elements has been restricted because said new use must involve a change of the dimensions and the proportions and the material of the article, object or known element to obtain the corresponding solution to the technical problem, and this use must be proved through experiment or evidence.

6. Term of patents. 20 years counted from the application as compared to 15 years counted from the date of the acceptance of the application as in the present law.

7. Grace period. There is a grace period of 6 six months prior to the filing of the application in which the experiments, exhibition or other publicity of the invention by the applicant has been effected for experimentation or commercial reasons. And not considered as prior.

8. Compulsory licencing. The provisions concerning the granting of compulsory licenses have been greatly increased and detailed but basically it is effective when there is an abuse as defined by the Antitrust Court. The principles remain the same.

9. Penalties for infringement. The penalties that the infringers must pay have been raised to a maximum of approximately of US$50,000 products manufactured infringing a patent will be destroyed, although the utensils or elements used in their production may be given to charity.

10. Utility models. There are no specific changes.

11. Industrial designs. The scope of protection has been increased since it will be possible to protect a combination of figures, lines and colors stamped in a flat surface to be incorporated in an industrial product for ornamentation. This includes the stamping of textiles, cloth and any laminated material or flat surface.

12. Integrated circuits. This entirely new matter is regulated in the law and defines it as the tri-dimensional disposition of elements, expressed in any shape and design for its manufacture, having an electronic function on which the elements, at least one of them, should be active and some or all the interconnections are an integral part of the body or the surface of a part of a material. To be protected they have to be original and different from what is known.

The term of protection is of 10 years counted from the filing of the application or the first commercial exploitation anywhere in the world.

The application can be filed before the commercial exploitation of the integrated circuit or within the two years following the date of public exploitation.

13. Confidencial information submitted to authorities for sanitory registration or authorizations. This refers both to information provided to the Health Ministry or to the Agriculture Ministry concerning in the first case pharmaceutical products or compositions and in the second case, agro -chemical products, using new chemical entity that have not been previously authorized by the corresponding authority.

The authority in each case cannot divulge or use the data provided for obtaining a registration or sanitary authorization, unless allowed by the applicant, for a term of five years for pharmaceutical products and ten years for agrochemical products, counted from the first registration or authorization granted by the Institute of Public Health or by the Agricultural and Cattle Service of the Ministry of Agriculture. In order to obtain this privilege the applicant must expressly state that the data cannot be divulged.

The following cannot be considered as a new chemical entity subject to the above privilege:

a) The use or therapeutic indication different from those authorized in other registrations or authorization of the same chemical entity.

b) The changes in the administration, form or the dosage authorized in other registration or sanitary authorization of the same chemical entity.

c) The changes in the pharmaceutical forms, formulations or combinations of chemical entities already authorized or registered.

d) The salts, complex, crystalline forms or those chemical structures based on a chemical entity already registered or authorized.

The privilege of secrecy will not be available:

a) When the applicant or registrant has incurred in antitrust practices as judged by the Tribunal of Free Competition Defense.

b) For reasons of public health, national security, none commercial public use, national emergency or other similar circumstances.

c) When the pharmaceutical product or agrochemical composition has been subject to a compulsory licensing.

d) When the pharmaceutical product or agrochemical compound has not been commercialized in the national territory within twelve months counted from the registration or sanitary authorization granted in Chile.

e) When the pharmaceutical or agrochemical product has a registration or sanitary authorization abroad.

All these changes will come into effect when the Regulations are published in the Official Gazette. This will most probably happen happen within the next four months. In the meantime, all applications will continue their prosecution in accordance with the present legislation and even after all these changes come into effect once the Regulations have been published. However, the applicants are allowed to subject their applications to the new provisions without loss of priority, provided that those applications have not been subject to oppositions. This also means that the “revalidation” of patents granted abroad is still viable.

All patents granted after the 1st January 2000 until this law come into effect would be considered as having a term of 20 years counted from the date of the filing of the corresponding application, unless the term of protection is shorter than the one granted under the present law, in which case the latter will prevail.

Santiago, March 2005.

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