Doctrine Of Equivalents In The Chilean Patent System

• Published date: 05 October 2020
• Subject Matter: Intellectual Property, Patent
• Law Firm: Silva
• Author: Mr Andrés Grunewaldt Cabrera

In Chile, interpretation of patents must be made according to article 49 paragraph 3 of the Law and article 44 paragraph 1 of the bylaw. According to these rules, the scope of the protection granted by the patent is determined by the content of the claims which therefore constitute the only object of interpretation; the descriptive memory and the drawings only serve as secondary elements to interpret the claims.

The latter means that our local Industry Property Law have adopted the claim system in order to determine as precisely as possible the object of patent protection. Thus, when it comes to a patent infringement, the problem often merges because the literal wording of the claim normally does not fully cover the protectable object from the point of view of the reason for protection.

In this sense, a first option is to follow a literal interpretation of the claims, however, this legal avenue in some cases may weaken the protection and incentives associated with the registration of a patent, because in order to circumvent that protection and to illegitimately take advantage of someone else's invention, it would be sufficient to introduce insubstantial and irrelevant modifications to an invention.

This risk can be seen even more clearly if we take into account that inventors cannot write the claims in very broad or general terms, since in such a case the National Institute of Industrial Property (INAPI) normally tends to restrict the literal wording as a condition in order to grant a patent application.

Having said that, when it comes to patent infringement, the challenge is try to avoid a literal and strict interpretation of the claims in order to protect and encourage the patent system, but at the same time without giving to the patent owner a broader monopoly on what he did not apply for in time, or on what is part of the prior art and therefore cannot be appropriated.

This problem has been addressed in countries like United States of America, Germany and Great Britain through the doctrine of equivalents.

This doctrine can be defined in the following terms:

'A means by which a patentee may raise a claim of infringement even though each and every element of the patented invention is not identically present in the allegedly infringing product. The purpose of the doctrine is to prevent an infringer from stealing the benefit of a patented invention by changing only minor or insubstantial details of the claimed invention while retaining the same...