Published on Wednesday 12th June 2019
What are the novelty or inventiveness requirements for a patent to be granted?
Novelty and inventiveness requirements in Chile are in general terms equivalent in meaning and scope to those accepted internationally.
Novelty needs to be absolute and worldwide, and in order to determine it, examiners have access to the principal world databases, such as those of the US Patent Office, the European Patent Office (EPO) and the Japanese Patent Office. Inventiveness is carefully examined by the Patent Office according to rather strict standards. Total or partial lack of inventiveness has generally constituted the most frequent causes for rejection of new patent applications in Chile. Moreover, inventions have also to comply with industrial applicability criteria, although these need not to be demonstrated and it is sufficient that the industrial applicability may result from the specifications.
What are the criteria for considering whether an invention is obvious in view of prior art?
The invention should appear non-obvious for a person skilled in the relevant technology. To determine compliance with this standard, applications are subject to a careful examination as to substance. Moreover, the practice of the Chilean Patent Office has evolved into additionally requiring that new inventions offer "amazing and unexpected effects", although this requirement has recently been rejected by the Supreme Court of Justice (see question 29). In fact, the Supreme Court has clearly confirmed that inventive step is equivalent to non-obviousness, this is, that it should not become evident from the existing state of the art, at the date of the application, for a person skilled in that particular art and, in particular, the Supreme Court confirmed that the law does not provide for other requirements.
What are the different types of patent protection that can be obtained in your country, for example, utility, design database? How do these types of patent protection differ?
In Chile the Patent Law provides for both product and process patents. In addition, the Law provides also for Utility Models and Industrial Designs.
Patents provide a stronger protection and their granting is subject to rather strict requirements resulting, in particular, in the need to conduct an examination of the invention as to substance in order to verify compliance of any patent application with all legal requirements. They offer a protection for 20 years from the date of grant.
Utility Models are also subject to examination, but this is frequently less strict, as far as inventiveness is concerned, as it mainly intends to ascertain the practical or real ‘utility’ of the invention. Protection for Utility Models lasts 10 years from filing.
What is the duration of patent rights protection?
duration of patent rights in Chile is 20 years from the date of filing the
If an invention is conceived in your country, does the first filing have to be made there?
No, this is not necessary. In fact there is no legal provision in Chile in this respect, nor there has been any known comment or observation when an eventual invention conceived in Chile is the subject of a later Chilean patent application originating in a foreign country.
What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
There are none.
Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas that are not eligible for patent protection?
Business and computer methods are not patentable in Chile. They are expressly excluded from patentability in the Patent Law. Equally not patentable are the discoveries, scientific theories, mathematical plans, economic or financial methods, as well as purely mental activities and gambling methods.
Methods for surgical or therapeutic treatment of human beings or animals are not patentable either, with the exception of products designed to implement such methods.
Plants and animals are not patentable, with the exception of micro-organisms – provided, however, that they comply with all patentability requirements. Plants are the subject of a different protection, which is provided by a special law that is not administered by the Patent Office but by a unit of the Ministry of Agriculture.
Equally not patentable are the parts of living beings such as they are found in nature, nor the biological material existing in nature, including genome or germplasm. However, processes employing one or more of the mentioned biological materials and the products directly derived from them can be the subject of patent protection, provided they fulfil the patentability criteria established by law.
Also not patentable are the new uses or change of shapes or dimensions of known products or known objects. However, the new use of known products can be the subject of patent protection when it solves a technical problem that previously did not appear to have a solution. In these cases, however, it will be necessary to include experimental evidence in the patent application.
Finally, inventions whose exploitation is forbidden because of the protection of public order, public behaviour, state security, morals or the environment are not patentable either.
Summarise the current level and nature of patent litigation in your country? Are there particular litigation trends related to specific industries, such as the pharmaceutical, payments, data analytics?
It is rather difficult to provide an accurate response to the current level of patent litigation in Chile.
As for litigation arising during prosecution, it is to be noted that Chilean Patent Law provides for the possibility of filing pre-grant oppositions. In this context, therefore, most of the patent applications filed in Chile are the subject of opposition in the period immediately following publication. The same situation is reflected in the context of trademark applications.
Another type of litigation is that, following granted appeals to the Patent Office’s decision on the application, either the patent is granted or the application rejected. These appeals may be filed either by applicant or opponent, or both, with the special Industrial Property Appeals Court. It is difficult to determine the approximate number of pending appeals since the Court does not keep a statistical record of them, although the contents of these cases can be consulted by anybody. Also in this case we can find a similar situation in the case of trademarks.
Finally, there is litigation conducted before ordinary courts, either in the civil or criminal system, normally resulting from infringements. In this case again, there is no possibility to determine the number of pending cases because the Chilean court system does not keep nor does it publish an account of them. However, the number of lawsuits in the field of both patents and trademarks is not very large.
What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?
Remedies provided by the Chilean patent law consist both of injunctive relief and monetary damages. In the case of the former, the decision on its terms and conditions is to be taken by the court. In the case of damages, they may be calculated upon the benefits the patent holder may have lost as a result of the infringement or upon the benefits the infringer may have obtained as the result of the infringement or, finally, on the level of royalties the infringer would have had to pay had he obtained a proper licence from the patent owner.
Is your country considering major changes to its patent system?
Chilean intellectual property is undergoing a major revision. In fact, on 26 April 2013, the government submitted a new complete draft Law on Industrial Property to Congress, covering every aspect of the law and introducing several entirely new matters. An initial discussion on this new draft took place mainly during 2014 and 2015, but it is still uncertain when it will be completed. In fact, discussion in recent years was almost non-existent, and the draft is still waiting in Congress for an official start of its complete discussion.
However, in 2018, to at least attempt to revise some important aspects of the IP legislation in great need of revision, the government decided to draft a kind of partial revised text of certain provisions considered to have particular importance. This new draft was filed with Congress on 20 September 2018. Therefore, Congress is expected to start, possibly at some time in the next two years, discussion of this new text.
It is a rather extensive text with a combination of substantive provisions but also includes a great number of provisions of administrative nature.
We list below, very briefly, the provisions likely to be more important in the context of the overall substantive revision of the legislation:
The discussion of this new text will have to be watched carefully since the position of Congress on its different matters will show what can be expected when the major revision on the overall intellectual property system may be engaged.
Does your country recognise the "patent exhaustion" doctrine, and, if so, how does the application of the doctrine compare with those in other jurisdictions?
In Chile there is no development of the doctrine of “patent exhaustion”.
However, in practice it is recognised that once the sale of products protected by a patent is authorised, the sale made by who acquired the product does not require authorisation of the patent owner, whereby the “patent exhaustion” doctrine is recognised in practice for product patents.
Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?
Chile is not a signatory of the Madrid Protocol and, according to the mood in various interested circles, it is not likely that the country will be a party to this agreement in the near future.
As to the TRIPS Agreement, Chile has been a party from the very first day and this agreement has very much become an integral part of the IP legislation. Although most of its provisions are fully incorporated into the IP law, its provisions are frequently used and cited in the context of different briefs filed in the course of prosecution of patents, trademarks and other IP titles.
Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
Chile is not a member of the Andean Community. Although Chile was one of the original founders of the Andean Community, it left it in 1976. As to the Mercosur’s "regional trademark system", in practice it appears to be completely unknown in Chile and we have never seen it cited in the context of any trademark case, not even as a reference.
What is the duration of trademark rights protection?
Duration of trademark rights in Chile is 10 years with the possibility of renewing indefinitely at the expiration of each term.
What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
The use of the registered trademark symbols is mandatory, though no direct sanction exists in the case of no use. However, lack of said symbols will make impossible the use of criminal actions in case of infringement. There has been some discussion about the effect of these provisions and they may be amended or even eliminated in the new Draft Law, on which discussion is to start soon.
What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
The trademark system can be considered particularly successful and trademark owners do not actually appear to face any particular problem. On the contrary, obtaining registration in Chile is fairly easy, with a reasonable cost, and defence of rights can be certainly considered on the side of owners of rights.
Does a trademark licence have to be recorded in your country to be effective?
Lack of record does not affect the licensing contract as such, nor its effects between the parties. However, lack of record will not permit to use the registered trademark against third parties. The most serious effect of this is the impossibility to complain against infringement.
What strategies have been successful in combating counterfeiting in your country?
The Chilean government has devoted major effort in the past 10 years to improving the industrial property system at the legal, judicial and administrative levels. Part of this effort has been directly addressed to the combat of counterfeiting. Hence, the last major legislation amendments have included special provisions in this respect and they have been accompanied by an improvement in the structure of the office in charge of the administration of the industrial property system as well as in the special IP Appeals Court. In addition, a recent modification – or rather, the starting of a brand new system to deal with general criminal actions, including a new prosecution and court system – has resulted in a clear improvement of judicial actions in this field, which has directly benefited the IP system. Finally, the government created a special unit in the civil police specifically devoted to intellectual property to assist the judiciary in the prosecution and investigation of IP crimes. Moreover, Customs have been particularly careful in watching out for possible counterfeits when admitting goods at the borders and active in the prosecution of infringement. All these measures have evidently resulted in a better awareness, at the national level of the importance of the IP system and, what is more important, a better awareness and knowledge in the judiciary about the need for decisions and measures that may contribute to a better implementation of the law.
Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
No. However in some cases such use could constitute an infringement of a registered trademark likely to be prosecuted. As far as ‘use’ is concerned, it is necessary to point out that use of registered trademarks is not mandatory in Chile. Thus use, or especially non-use, cannot constitute the basis for any legal action.
Do you recommend that companies register their domain name in your jurisdiction if they do business there?
Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
None. The Chilean trademark can be considered as particularly successful, resulting from a good legal system and correct administration. Chile has, by comparison, a very high number of registrations, the majority of them belonging to local applicants.
What are the key legal issues to be considered when registering a trademark in your country?
A good pre-registration search should certainly assist in avoiding unnecessary problems or facing oppositions from third parties or official observations from the authority in the process of prosecution.
Can a multi-class trademark application be filed in your country?
Yes. Chilean law has always permitted multi-class trademark applications.
Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
Trademark law does provide for the possibility of opposition in a term of 30 days after publication. This term cannot be extended. An important number of trademark applications are normally the subject of opposition. Pre-grant opposition is also provided for in the case of patents and a good number of applications are the subject of opposition. Competitors normally keep an eye on the filing of both trademark and patent applications when published so they can file oppositions if the new applications are likely to somehow affect their business activities.
Does your country have a judicial or other governmental process to restrict the importation of counterfeit goods? If so, give details.
To align Chilean legislation with international treaties signed by Chile, there is a procedure before the Chilean civil courts that can be initiated by any owner of industrial or intellectual property rights who believes that certain goods seeking to get into Chile infringe its rights.
This procedure allows the owner of industrial or intellectual property rights to request that the court suspend the dispatch of goods allegedly involving a possible infringement of their rights. To present this complaint before the civil court the applicant must meet certain requirements established by law, such us prove ownership of the claimed right, indicate the action that intends to interpose, etc.
Once the complaint has been submitted, the court could accede to the request without further process or request a warranty. The courts’ decision is can be changed only by an appeal before the same court.
Decreed the measure, this has a duration of 10 working days (its duration can be extended by the court) since the importer, owner or consignee of the goods and the applicant of the measure are notify of it and, for compliance, the administrator of the customs office where the goods are located must be notified.
In the same 10-day term, the applicant of the measure must pursue the action corresponding to the violation and request that the measure is maintained.
It is also possible for customs authorities to suspend dispatch of goods for five days if a simple examination proves that they are counterfeit trademark goods or goods that infringe copyright.
The Customs Office must inform this situation to the owner of the trademark or copyright, in order to exercise the rights protected by law in their favour.
What are the key issues to be considered when licensing trademark use rights in your country? Does your jurisdiction invalidate trademarks based on "naked licences" (ie, where the licensor does not impose quality standards on the goods and services associated with the licensed trademark)?
Chilean legislation does not contain specific rules regarding licence agreements related to the use of rights of a trademark.
The only specific provision in Chilean law is found in the Industrial Property Law where the need to register this kind of agreements is established in order to make the agreement effective against third parties. For registration of these agreements with the Chilean Industrial Property Institute it is necessary pay an official fee. The lack of this registration does not affect the validity of the licence agreement, but it will not be enforceable against third parties.
However, in Chile there are no special rules on licensing contracts.
In consequence, general commercial and civil rules will apply. Of these, it is necessary to cite in particular article 1545, which provides that the "parties will have autonomy" in the case of contracts. The text of the article states:
"Any contract validly executed is law for the executors of same, and cannot be invalidated if not by their mutual consent or by legal causes" (Chilean Civil Code, article 1545).
In view of this lack of ‘law on licensing’, the provisions established by the parties in the contract will be essential to establish the terms of the licence agreement. In addition, unless any of the provisions were to be considered as being against Chilean public policy, the contract as drafted by the parties should be valid and enforceable in Chile.
Finally, there are certain matters that are convenient to regulate expressly in the contract, such as the duration of the licence (which must be related to the time duration of the trademark registration), the territory in which the licence is granted (if it has been granted to use the trademark in the entire country or in one or more specific regions), determinatives whether the licence is exclusive or not, etc. Also, it should be noted that in Chile parallel imports are allowed, so the licence cannot contain a clause restricting them.
Are there any limits on the scope of licensee indemnification relating to workmanship, material, or design of any products, articles, logos, characters, etc, bearing the licensed trademark?
As stated above, the the absence of provisions that expressly rule the licence agreement, the scope of the licensee indemnification may be determined and freely established by the parties in the contract.
Nevertheless, considering that every provision of the contract must be in harmony with Chilean Public Policy and Law Principles, any indemnification established by the licence agreement must follow a proportionality criterion according to the value of what that is being offset, since at the time of the enforcement of the contract or enforce damages before the Chilean courts, they will assess the proportionality of the stated amounts, and if they consider that these amounts are harmful to some of the parties, they are entitled to modify them to restore the balance between the benefits determined for each party.
Under what circumstances may a trademark licence be deemed a franchise arrangement under the laws of your country?
Chilean Law does not contain specific rules regarding the franchise agreement so, like the licence agreement, it is regulated by the stipulations of the parties.
In these circumstances, a licence agreement of a trademark shall be deemed a franchise arrangement according to the stipulations of the contract determinate by the parties.
Are there any conditions or limitations on the ability of a trademark licensor to enforce or terminate a trademark licence agreement?
Between the parties, there are only general limitations gives by the Chilean Public Policy and General Law Principles, in addition to the condition or limitation set by the parties in the contract.
Additionally, against third parties there is the registration requirement in the Chilean Industrial Property Institute that we have reviewed in question Nº 27. Without this record the license agreement is not effective against third parties
Under what circumstances may a trademark be legally deemed "abandoned" under the laws of your country where there is no obvious decision by the trademark owner to abandon the trademark?
In Chile there are no special regulations that contemplate a situation in which a trademark is legally deemed “abandoned”. In these circumstances, once the trademark registration is granted, the protection given by the Chilean law is absolute and there is no obligation on the owner to use the trademark. The trademark owner is entirely protected by Chilean law even when he or she does not effectively use the trademark.
The only case included in the Chilean Industrial Property Law in which abandonment of a trademark is found relates to trademark applications. In this case, during the prosecution of a trademark application, if the applicant does not pay the official fees on time or does not comply with formal requirements requested by the Trademark Office, the Authority could declare the trademark application nul and void.
Is copyright registration recommended for local packaging and marketing materials?
Copyright registration is always recommended because it greatly facilitates possible judicial actions. In fact, although Chile is a member of the Berne Convention and therefore registration is not legally necessary. In practical terms it will always be easier to prove a right protected by copyright when it has been registered and this will reflect in a more efficient judicial action.
What is the duration of copyright protection?
The duration of copyright protection in Chile is the life of the author plus 70 years.
Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?
No, there are none.
Does your country recognise the 'first sale' doctrine for purposes of limiting copyright enforcement?
In Chile there is no development of the "first sale" doctrine.
However, in practice it is recognised that once the sale of products protected by copyright is authorised, the sale made by whoever acquired the product does not require authorisation of the copyright owner, whereby the first sale doctrine is recognised in practice for copyright expressed in products, such as a CD containing music.
What is the standard of contributory copyright infringement in your country?
Normally, copyright infringement stems from the simple copying of books or other writing and sometimes it had been found in the incorporation of characters or situations to plays or TV stories. Also it is often found in the music field and more frequently in software.
In all infringements, contributory infringement will also be punished according to the general criminal law, which will sanction everyone involved even if the degree of responsibility of each party is different.
What are the criminal sanctions for intellectual property infringements?
Criminal sanctions for intellectual property infringement are all economic fines, with amounts that can be fixed by the court, depending of the case, with rather extensive ranges.
Does your country recognise intellectual or industrial property protection in databases?
Not as such, but databases enjoy general copyright protection.
Does your country recognise a right of publicity?
There is no recognition in Chilean law of the "right of publicity".
Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR for IP disputes?
Only in the field of domain names is ADR used, and broadly so. In fact, because of the structure of IP legislation it would be difficult to use ADR for solving other IP disputes.
Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?
Yes, they can be recorded with Customs.
Describe any recent major developments or anticipated changes in your intellectual property law.
Two major pieces of legislation are actually being discussed and both contain important new features that should improve, clarify and strengthen the Chilean IP system. One of these initiatives is a new Draft Industrial Property Law, which will constitute a major revision of the present Law No. 19.039, enacted in 1991 and revised in 2005, 2007 and 2012. This draft has been discussed by several interested circles and was submitted to Congress in April 2013 (see question 10), being still pending of discussion.
The second set of provisions is contained in a Draft Law filed for Congress discussion at the end of January 2012 and mainly designed for improving the protection of data filed for obtaining marketing approval of pharmaceutical patents. This matter has been the subject of important improvements over recent years and it is likely to be further improved once the new law is approved. In fact, the new Draft Law on the matter is designed to improve data as well as patent protection by formally instituting “linkage”, which should permit patent owners to react against misuse of their patents or information contained therein, in the process of obtaining market authorisation for pharmaceutical products. The draft law also strengthens the possibility of requesting and obtaining judicial injunctions in these cases, which are rather difficult to obtain with the actual legal provisions.
Describe any significant recent court decisions in your country relating to intellectual property.
Four recent decisions of the Supreme Court of Justice in the field of industrial property are worth mentioning.
The Supreme Court of Justice, hearing an annulment case, recently issued a decision revoking prior decisions of the Patent Office and of the special IP Appeals Court, ordering the granting of a patent which had been denied on the basis of lack of inventive step of the invention. In fact, both the Patent Office and the Appeals Court had considered that applicant had failed to demonstrate during the examination as to substance – as it had been requested by the examiner – that the claimed invention could produce "amazing and unexpected results" for the solving of a particular technical problem. The Supreme Court ruled that this request was illegal since the Patent Law considered compliance with the inventive step patentability requirement was satisfactory by demonstrating that invention was non-obvious for a person skilled in the art related to the technology covered by the invention. Hence, the request of the two lower courts was illegal since it went beyond what the Patent Law actually required. Therefore the two decisions were revoked and the Patent Office was ordered to grant the patent subject of the application.
The four decisions above prove an interesting and rather new involvement of the Supreme Court of Justice on IP matters and a correct understanding of the problems involved in relation to existing national legal provisions and, interestingly enough, also of international treaties and foreign practice. The latter appears to be not only an interesting new approach to IP matters but it also constitutes a guarantee for a branch of law that has an important foreign component in its structure but, in particular, in its practical implementation.
Are there any licence agreement formalities for intellectual property that must be observed?
The only formality expressly required by Chilean Law is the registration of this kind of agreements in the Chilean Industrial Property Institute to be enforceable against third parties.
However, to facilitate the demonstration of the existence of the agreement, it is advisable to notarise licence agreements and, if the agreement originates from abroad, to legalise it with the consul of Chile in the foreign country and then in the Chilean Ministry of Foreign Affairs.
Does your country have a cybercrime law that provides for civil remedies in connection with either computer intrusions or theft of intellectual property? Are other causes of action or remedies available in your jurisdiction as regards unauthorised computer intrusion and misappropriation of electronic information?
Law No. 19.628 expressly forbids the use of personal information without owner’s authority in any form.
Briefly describe the tax considerations for intellectual property in your jurisdiction including any incentives.
No, but protection of all data has been improving (see question 41), in particular in the pharmaceutical field.
Briefly describe the intersection between intellectual property and competition law in your jurisdiction.
No. Only to the pharmaceutical-related industry.
Briefly explain the implications of a bankruptcy filing under the laws of your jurisdiction on intellectual property licensed rights.
No. There are none in Chile.