Damages In The Context Of A Chilean Patent System

• Published date: 18 June 2020
• Author: Mr Andrés Grunewaldt
• Subject Matter: Intellectual Property, Patent
• Law Firm: Silva

In the context of a patent infringement, one of the most relevant objectives of the patent owner in the enforcement arena is the eventual damages caused by the infringer. In this context, in Chile the industry property law sets forth that it is possible to file a civil action, before a civil judge, seeking the following goals:

(1) The cessation of the acts infringing the protected right;

(2) Compensation for damages;

(3) Adoption of the measures necessary to avoid the continuation of the offense;

(4) The publication of the decision, at the expense of the party found guilty, by means of inserts in a newspaper to be chosen by the plaintiff. This measure shall apply where the decision expressly so determines.

In this sense, damages are only available in case there is a patent infringement brought before a Civil court. Despite the fact that our law also includes a criminal infringement, in this case the punishment is a fine that can reach US 80,000, but the plaintiff are not allowed to bring a civil action before a criminal judge, it is necessary to file a separate action before a civil judge.

Having said that, damages has been historically calculated according to the general rules of civil liability (e.g., direct, moral, and lost profit damages).

This is the first option that the law offers to patent owners, and it implies the general application of our civil code.

In this sense, one of the major disadvantages faced by persons and companies seeking a patent infringement compensation in our system is the requirement of proof of the damage caused by the violation of the monopoly position over the patent granted, especially when it comes to lost profits.

In view of this situation, our industrial property law was amended in 2005 by enacting Law 19.996. This new statute regulates among other issues the opportunity of specific precautionary measures in civil matters and an alternative way to determinate damages. This modification was also conducted considering the obligations that Chile adopted in the Marrakech Agreement and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

This new statute offers alternatives for compensations in article 108 of our industrial property law, with the following options:

a) Lost profits from the patent holder because of the infringement.

b) Profits earned by infringer as a result of the infringement; or

c) A license fee, taking into account the commercial value of the infringed right and other licenses...