Chile Intellectual Property: New Legislation Sent to Congress

Recently, the government presented a bill which plans to change and improve the current industrial property system. The major modifications mainly aim to ensure a stronger and more efficient protection of industrial property rights and also to incorporate more efficient and expedited procedures (mainly for patent and trademark requests). The changes will be welcomed by the business community, particularly those who rely on their Intellectual Property to differentiate themselves from competitors. 

Regarding Patents: 

• The project introduces the option of a provisional patent. This would be important for situations in which an applicant cannot at the moment of applying, meet all requirements set for obtaining a definitive patent. The provisional patent provides the applicant with a term of 12 months to proceed with the filing of a definitive application.
• It also introduces new limitations to rights granted by a patent to its owner, stating that the rights conferred by patents will not be extended to acts performed privately and without commercial reasons; exclusively experimental acts; and preparation of medicines under medical prescription for individual cases, among others.
• The new changes introduce an added fee for every twenty extra pages in any application that surpasses fifty pages concerning patent applications. 
• It also establishes patent usurpation which regulates the right of the legitimate owner of a patent to request the transfer of the registration and damages for scenarios in which a patent has been registered without the right to do so. 
• In addition, the project reduces the term in which to request supplementary protection, when registration is granted, also limiting the protection time period to a maximum of five years time.

Regarding Trademarks:

• The proposed changes recognize new types of brands in various formats, such as movement marks, holograms, position marks, olfactory marks and tactile marks, among others. Up until now, the concept of a trademark has been limited to those signs that can be graphically represented, namely, wordmarks, figurative trademarks, word & label trademarks, and sound trademarks.
• The proposed changes introduce the possibility of canceling a trademark based on its lack of use within at least five years as from the date of its registration. It also allows canceling when a particular trademark has lost its distinctive quality. The new project also eliminates commercial establishments (directly related to physical location) as a distinctive sign.
• The legislation also seeks to introduce a new type of crime, called ‘trademark counterfeiting’, which includes not only trademarks, but geographic indications and designation of origin. Being convicted of trademark counterfeiting can result in imprisonment for a period that ranges between 541 days to three years and one day, together with fines. 
• In the case of trademark infringement, the project grants to the owner of the trademark the possibility to substitute compensation for damages with a sole compensatory sum, which must be determined by a judge, with a cap of 2000 Monthly Tax Units.

Regarding procedures:

• The proposed changes seek to establish trademark procedures which are more efficient. One way the project aims to do this, is by combining form and substance in a single examination (which, according to actual regulation, is done separately), thus reducing the processing time. It also plans to change regulation regarding the processing of industrial designs, which is currently the same one applied to patents. In order to adequate the process to the nature of its purpose, the project plans to provide a new procedure destined to favor effectiveness, adjusting itself to the particular needs in the processing of industrial designs (which have a brief lifespan and are easy to copy or reproduce, characteristics that differ greatly from patents).

Regarding modifications to the Criminal Procedure Code:

• The proposed changes include the criminal offenses contained in the Industrial Property Law as those that may be denounced by any person, and not only the person directly entitled to, by classifying these offenses as ones which grant public criminal action.

Regarding the Industrial Property Institute:

• The proposed changes introduce the possibility of it presenting itself as an interested party when appeals are filed against decisions made by the Institute.

Conclusion: 

Foreign companies entering the Chilean market rely on their Intellectual Property to differentiate themselves from the competition and stay relevant with clients. This can be anything from their brand to specific technical patents they have been granted. The proposed changes will help bring Chile in line with international norms and provide companies operating in the market a sense of security. 

Harris Gomez Group is an international law firm with offices in Santiago, Bogotá, and Sydney. Our firm has been working with mining equipment, service, technology providers both in Latin America for 16 years. We find that our clients appreciate that we understand the industry, provide fixed pricing, and take the time to learn our clients business.

To better understand how we can support you, please contact Cody Mcfarlane at [email protected]