New Intellectual Property Law in Chile

Summary: Law 21.355 modifies the current Intellectual Property Law No. 20.254. This new provision introduces modifications in the areas of Patents and Industrial Designs. In the field of Patents, it modifies the term to request Supplementary Protection, and introduces the figure of Provisional Patent applications. On the other hand, in relation to Industrial Designs, this Law modifies its term of validity and creates the figure of the Abbreviated Procedure for Industrial Designs.

The new Intellectual Property Law No. 21,355, will enter into force on January 5, 2022.

In the field of Patents, this new provision modifies the term from 6 months to 60 days, so that the applicant can request Supplementary Protection. This Supplementary Protection refers to the additional time that can be added to the termination of the Patent due to unjustified administrative delays by the Chilean Patent Office (INAPI – National Institute of Industrial Property).

In turn, the new Law introduces the figure of the Provisional Patent application, which must not meet all the requirements for definitive patents. With the Provisional application, the applicant may file a definitive patent application within 12 months of the date of filing the provisional patent and may use the provisional application as a Priority to file patent applications in any member country of the Paris Convention.

In addition, this provision creates a civil legal action, so that the legitimate inventors of a certain invention can recover a Patent Right, on a third party who has registered it without being entitled to do so. This action must be carried out within the term of validity of the Patent and the competent authority to review these actions will be the Ordinary Civil Courts.

On the other hand, in the field of Industrial Designs, this Law modifies the term of validity, which extends to 15 years. The applicant will be required to pay a maintenance fee every 5 years.

Likewise, the figure of abbreviated procedure for Industrial Designs is created, the above, in order to grant the holder a Certificate of Deposit, without the need to practice a substantive examination. This expedited procedure provides the applicant with the opportunity to obtain the Certificate of Deposit for having met the formal requirements. Once the Certificate of Deposit is granted, the Industrial Design will be published and will be valid for 15 years, counted from the presentation of the respective application. During this time, the holder or any interested third party may request the substantive examination.

Likewise, the Certificate of Deposit will only accredit the content of the Industrial Design with respect to its owner, but will not give you the right to take legal action in order to protect your Intellectual Property rights.

In the event that the owner would like to take legal action against alleged infringers, it will be necessary to comply with the complete registration procedure and submit the Industrial Design to the substantive examination.

Finally, by way of conclusion, it is important to note that the regulation of this legal provision has not been published. However, we believe that this information can be very valuable for future cases and strategies.

By María Alejandra Cortés, LLOREDA CAMACHO & CO, Colombia, a Transatlantic Law International Affiliated Firm.  

For further information or for any assistance please contact colombia@transatlanticlaw.com 

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