NEW AMMENDMENTS TO CHILEAN PATENT LAW
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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