Trademarks & Patents – Significant changes in the industrial property system in Chile

Trademarks & Patents – Significant changes in the industrial property system in Chile

By María Luisa Santa María.

On May 9, 2022, Law No. 21,355, also known as Short Law, entered into force in Chile. The Short Law introduced long-awaited reforms within the industrial property system.

The following are amongst the most relevant amendments to the patent regime:

  • Provisional patents: Inventors, universities, research centers and companies that cannot comply with all formal requirements of a definitive patent application, may apply for a provisional patent. No set of claims must be filed. Instead, a clear and complete description of the invention, in English or Spanish, is enough.

The Short Law provides a 12-month term counted as from the filing of the provisional patent to gather all necessary information and file a definite patent application.

  • Patent usurpation action: Previously, in case of a third-party attempt to appropriate an invention, its inventor or legitimate owner could only request the cancellation of the patent registration that was unlawfully obtained.

As a result of the new provisions, the legitimate owner of the patent rights may now request the assignment of the patent registration and seek compensation for damages. This action may be filed before the civil courts during the entire term of validity of the patent registration.

  • Right of priority: Owners of a patent application under the Paris Convention may file a request for restoration of priority within two months following the expiration of the priority period.
  • Annuity system: Annuity payments are now admitted as an alternative to the ten-year or five-year system.
  • Supplementary protection: The term for requesting supplementary protection of a patent was reduced from 6 months to 60 days counted as from the registration date. Supplementary protection may be granted for a maximum of 5 years.

Furthermore, the Short Law introduced substantial amendments to the trademark system, including those mentioned below:

  • Cancellation for lack of use: As a result of the recent changes, Chile is no longer amongst the few countries that do not require use of a mark for purposes of maintaining and renewing a registration.

Nowadays, in order to prevent the total or partial cancellation of a trademark registration for lack of use, effective and real use of the mark must have taken place in Chile within five years from the date of its registration, or from the last use that can be attested. The non-use cancellation action may be filed by a third party with legitimate interest. However, it may not be declared ex-officio by the National Institute of Industrial Property (“INAPI”).

In this way, Chile aligns with con Argentina, Brazil, Costa Rica, El Salvador, Guatemala, Panama, Paraguay, Puerto Rico and Uruguay, adopting a cancellation period of five years. Meanwhile, other countries in the region have implemented shorter periods of time, such as in the case of Venezuela (two years), Bolivia, Colombia, Cuba, Ecuador, Honduras, Mexico, Nicaragua, Peru and Dominican Republic (three years).

  • Non-traditional marks: As a result of a broader definition of trademark, and the suppression of the requirement of graphic representation, it is now possible to obtain registration for non-traditional marks, amongst others, scent marks, tridimensional marks, motion marks, etc.
  • Genericide: The Short Law provides for the cancellation of a trademark registration when the mark has lost its distinctive character after becoming the usual designation of a product or service.
  • Trademarks renewal: It is possible to apply for renewal of a trademark registration within 6 months prior to its renewal due date and up to 6 months following its expiration.
  • Elimination of commercial and industrial establishments trademark registrations: Current registrations for such marks will have to be renewed as service trademarks upon their expiration.

The broad scope and depth of the amendments introduced by the Short Law constitute the most relevant reform of the Chilean industrial property system in the last 30 years, and have led, without doubt, to its harmonization with international standards.

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