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  Chile: Modifications to Chilean Industrial Property Law
Estudio F. Villaseca, www.villaseca.com

21/6/2006


Please note that on December 1st, 2005, modifications to Chilean Industrial Property Law No. 19.039 were introduced by Law 19.996 effective as from such a date.

The main modifications contemplated are the following:


I.          General



a)    To the protection already granted to trademarks, Patents of Invention, Utility Models and Industrial Designs is added protection for layout-designs (topographies) of integrated circuits, geographical indications or appellations of origin, trade secrets and undisclosed information.

b)    Official taxes are raised on average in 50%.

c)     Private documents signed before a Notary Public and legalized up to the Chilean Consul will be sufficient to assign or license industrial property rights.  The requirement of public deed is eliminated.

d)    The first examination of any application for industrial property right will be only formal.

e)    
The new Courts of Appeals in Industrial Property matters will work in two rooms, and even extraordinarily in three rooms.

f)       The Court of Appeals in Industrial Property matters will be formed by 10 members, six of which must have specialized knowledge of industrial property matters.

g)    Oppositions are contemplated for all applications of industrial property rights subject of registration, that is: trademarks, patents, utility models, industrial designs, layout-designs (topographies) of integrated circuits, geographical indications or appellation of origin.

h)     The probatory term in opposition cases is reduced, regarding all rights excepting trademarks, from 60 to 45 working days extendible for the same term.

In the case of trademarks it remains 30 working days extendible on the same term.



II.         Trademarks



a)      Trademark applications will have to be applied for specific products or services or for commercial or industrial establishment associated to specific products, having to name in both cases the classes or the international classification to which the products correspond.


Therefore, it will not be acceptable to apply for trademarks asking protection for “all products comprised in the class” as it was possible before.



b)      Trademarks that are not intrinsically distinctive may be registered, provided that they have acquired a distinctive character as a consequence of use in Chile.



c)       The analysis of similarities among trademarks in case of rejections of ex – officio or oppositions will be made comparing the products per se and not the classes as a whole, as was the rule before the modification.



d)   Cancellation actions against registrations obtained in bad faith do not preclude.



III.        Patents



a)  Patents will be granted for a term of 20 years as from the application and not for 15 years as from the date of registration. There are no possibilities to enlarge the term.

b)    Confirmation and Precautionary patents are eliminated.

c)     A grace period of 6 months is given for the presentation of patent applications in case that they have been divulged as direct or indirect consequence of practical tests, exhibition of the invention in official or officially recognized exhibitions or unfair practices.

d)    There is a term of 60 working days to ~~file the missing antecedents requested in the preliminary examination. If they are not completed within the term the application will be considered as not ~~filed.

e)     The terms to reply the Official Actions have been generally shortened, existing the possibility of asking for enlargement in same cases.

f)       The term of preclusion of a cancellation action against a granted patent has been shortened from 10 years to 5 years to be counted as from the date of registration.

g)    There have been established 3 cases of non-voluntary licenses: namely,



1)        Practices against free competition declared by the antitrust court;


2)       Public health national security; non commercial public use; national emergency or others of extreme urgency;


3)       Exploitation of a posterior patent that cannot be made without infringing a previous patent.



h)     Burden of proof: In civil actions regarding patent infringements, the Court is enabled to request the defendant to credit he has used a procedure different from the patented one, provided that the product is new. The product is considered as new when it complies with the novelty requirement at the time of its filing.



IV.       Utility models

a)      They are protected for a term of 10 years as from the application date.

b)      Provisions regarding patents of invention are applicable when they correspond to utility models, but they do not require an inventive step.



V.        Industrial Drawings and Designs

a)      The protection of bi-dimensional industrial drawings as well as three dimensional industrial designs is contemplated.

b)      The term of protection is granted for 10 years, non-renewable, as from the application date. 

c)       Protection requirement is novelty.

d)      The protection of industrial drawings and designs is without prejudice to what may correspond according to Copyright Law.



VI.       Layout - designs (topographies) of integrated circuits



a)      Originality is required for protection.

b)      Protection is given for non-renewable term of 10 years, as from the application date in Chile or as from the first commercial exploitation of any part of the world.



c)       Application for registration in Chile must be ~~~filed before commercial exploitation or within 2 years following first commercial exploitation anywhere.



VII       Trade Secrets

a)      Are protected on similar standards than TRIP’s.



VIII.     Undisclosed Information

a)      Is given for pharmaceutical and agricultural-chemical products during 5 years or 10 years, respectively, as from the registration or sanitary license granted in Chile.

b)      Is granted only for new chemical entities understood as new chemical ingredient.

c)      
In case of pharmaceutical products the National Institute of Public Health is the entity qualifying the data protection as new.

d)      The following are not considered as protectable data protection:

1)     Those products that have already been commercialized in Chile;


2)     Those that have already been ~~~included in a previous Chilean registration or sanitary registration;


3)     Those that have a foreign registration or sanitary authorization with more than 12 months of validity;


4)     Those that have not been commercialized in Chile after 12 months from the granting of national registration or Health Authorization.



IX.       Geographical indications and appellations of origin



a)      Are expressly recognized by the law, which grant them an indefinite protection.

b)     
They are subject to registration in Chile in order to be enforceable.



X.        Observance of Industrial Property Rights



a)    Civil actions in addition to Criminal actions are established for protection of Industrial Property Rights to avoid that the infringement prosecution and indemnity damages go further.



b)    Cautionary and pre-judicial cautionary measures are contemplated.



XI.       Transitory Articles



a)      Industrial Property Right applications ~~filed before December 1st, 2005, will continue their prosecution according to the proceeding established before the modification of the law.



b)      Notwithstanding the above, within 12 months following December 1st, 2005, the applicants of industrial property rights, that do not have pending oppositions, will have the alternative to ~~~file a new application according to the modified law, which will maintain the priority application of the original one.



c)       Applications for renewal of trademarks ~filed after December 1st, 2005 will have to specify the products or services indicating the class on international classification they pertain.



d)      Patent of inventions granted after January 1st, 2000 up to December 1st, 2005 will enjoy of the protection of a non-renewable term of 20 years to be counted as from the application unless said term were less than the 15 years term as from the registration established before the modification.

Kindly be informed that original text of Law 19.996 can be downloaded from our web site villaseca@villaseca.cl.

Please do not hesitate in consulting us if you have any doubt or comments in this matter.




ESTUDIO FEDERICO VILLASECA
Sergio Amenábar V.




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