Patents Comparative Guide - Mondaq Chile - Blogs - VLEX 849712332

Patents Comparative Guide

Published date28 September 2020
Subject MatterIntellectual Property, Patent
Law FirmSilva
AuthorMr Sebastian Alvarado and Andrés Grunewaldt

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

Law 19.039 on Industrial Property Law, the Regulations on Law 19.039 and the National Industrial Property Institute Guidelines.

1.2 Who can register a patent?

Inventors and their assignees by contract or law (ie, work for hire), which may be either individuals or legal entities.

2 Rights

2.1 What rights are obtained when a patent is registered?

The exclusive right to use, produce, sell and commercialise the invention in any way; and in general, the right to execute any commercial exploitation of the same. In practice, as in most countries, a patent is a negative right which gives the owner the right to exclude others from using the patented invention. Exercise of the right may be subject to other regulations (eg, health regulations for pharmaceutical patents).

2.2 How can a patent owner enforce its rights?

A patent owner may enforce its rights through civil and criminal proceedings initiated before the judicial courts. However, there are no specialised IP courts before which a patent infringement lawsuit can or must be brought.

2.3 For how long are patents enforceable?

A patent lasts for 20 years from the filing date. With regard to the Patent Cooperation Treaty (PCT) national phase, the 20 years are calculated from the international PCT application filing date. When it comes to civil actions, the patent owner has four years from the date of the infringement to enforce its rights and five years in the case of criminal offences.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The National Industrial Property Institute (INAPI) is empowered by law to act as the patent office for the registration of patents and designs in Chile.

3.2 What is the cost of registration?

The costs of registration typically range from between $4,000 and $6,000 in professional fees and $1,100 in government fees.

3.3 What are the grounds to reject a patent application?

Lack of patentable subject matter, novelty, inventive step or industrial application. An application may also be rejected in case of lack of unity of invention, support of the claims in the specifications, non-reproducibility of the invention or definiteness of the claims.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

Patent Prosecution Highway (PPH) programmes that INAPI has signed with the patent offices of different countries (eg, the United States, China and Japan) under the PCT PPH and PPH-Mottainai modalities.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

Standard medical method claims are not accepted. These must be drafted in the Swiss type form.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

Yes, it is possible to request a patent extension term, known as 'supplementary protection' (Article 53 of Law 19.039), provided that:

  • there has been an unjustified administrative delay in the grant of the patent; and
  • the patent was granted more than five years from the filing date of the application or three years from the request for examination, whichever is the later.

The request must be made to the Industrial Property Tribunal.

3.7 What subject matter is patent eligible?

Patents may be obtained for all inventions - whether products or methods - in all fields of technology, with the exception of the exclusions on non-patentable subject matter set out in Article 37 of Law 19.039. These include software, business methods and medical procedures. Without prejudice to the foregoing, if software is included within a system, then that system and other technical elements may be patented.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

Yes, an appeal may be brought to the Industrial Property Tribunal within 15 days of the date on which the rejection notice is issued.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The National Industrial Property Institute (INAPI) has exclusive jurisdiction to resolve validity issues regarding patents through an administrative procedure. The decision may be appealed before the Industrial Property Tribunal, whose decision may in turn be subject to a cassation action before the Supreme Court.

4.2 How can the validity of an issued patent be challenged?

Through an administrative procedure initiated by an invalidation claim filed before INAPI and served personally on the patent holder or its appointed agent. The invalidation claim must be filed and served within five years of grant of the patent. The procedure involves a term for responding to the claim, an evidentiary term and the appointment of an examiner to review the patent on the grounds claimed by the plaintiff. INAPI will issue a decision...

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