On July 2018 the Chilean government proposed a Bill in Congress to partially and swiftly amend Chile’s Industrial Property Law (Law No. 19.039). This Bill includes legal provisions that would allow several international treaties signed with the European Union, to be executed. In general, the Bill seeks to strengthen the current institutional Intellectual property framework, seeking to improve the protection of the rights it enshrines and establishes more effective registration procedures. Currently the Bill has been remitted to the Senate and is undergoing discussion and formal revision process before it can become proper legislation in Chile.
This article will focus mainly on two modifications within the Bill that will improve and strengthen provisions regarding patent law in Chile.
One of the most important improvements that will be introduced in order to correct the outdated Intellectual Property legislation is the figure of the patent usurpation action. This action is a better alternative with regards to the remedy, which is established in article 50 letter a) of the current Industrial Property Law. The existing action, in strict nature only allows the rightful inventor or legitimate right holder of the patent to file an opposition action against a certain patent application or an invalidation action against the patent registration, in order to impede the patent for being conceded or annul a granted patent.
This action would leave the rightful inventor or the legitimate right holder with no right at all, destroying all means for protection, due to the invalidation of the said patent application or conceded patent. In practical terms, this action is not intended to restitute the rights to the rightful inventor or right holder, making it a very ineffective measure and remedy for IPR protection.
The essential right which the usurpation action will confer the legitimate right holder, is that he will be entitled to request the usurped patent rights in order to proceed to the transfer of the rights on their behalf, which will avoid the invention from falling into public domain.
A compensation for the corresponding damages that this usurpation caused the rightful holder or inventor is also permitted under this provision of the bill.
However, as established in article 50 bis of the Industrial Property Bill, the action will be normed by civil court procedures when brought against a granted patent.
In our professional judgement, the legal scenario regarding the action being brought before civil courts with no intellectual property trajectory seems a myopic legislative decision, due to the fact that the reasonable and competent organ in this matter, would be the Industrial Property Tribunal, which has a proven and vast route in passing judgments in Intellectual Property matters. The usurpation action must be filed within 5 years from the registration of the patent.
Another shortcoming is that with the present wording of article 50 bis of the Bill, the possibility of filing this action is only considered when the patent is already granted, and is not enshrined as a right which can be brought in an opposition procedure or even better, at any instance during the prosecution procedure before the Patent Office (Industrial Property Institution).
Observations regarding this point were made by the National Association of Intellectual Property (ACHIPI), proposing that the rightful inventor or holder must be able to exercise this action at any moment of the procedure, not having to wait for the patent to be granted.
This remedy should be the mirror image of the one enshrined in section 8 of the German Patent Act by which the party aggrieved by usurpation can require the patent applicant to assign to him the right to the grant of the patent in the case of a patent application. Jointly, with regards to patent which has been granted, the aggrieved party can require the proprietor of the patent to transfer the patent, within a time limit of two years after publication of the grant of the patent.
A second improvement of extraordinary relevance that is sanctioned by the Bill under study is the possibility of filing provisional patent applications under article 1 number 24 of the Bill, which is not regulated under our current legislation. In practice, this legal instrument has been strongly requested by Chilean universities and research centres that have increasingly become aware of the advantages of protecting their inventions (procedures and / or products) through provisional patent applications.
Under the bill, provisional patent applications will allow the inventors’ right of priority to be “reserved” for a period of twelve months. After this period is over, the applicant must formally request the definitive patent application before the Chilean Patent Office (National Industrial Property Institution). However, the provisional patent application cannot claim the priority of a previous application as in other countries, making it only applicable for new inventions.
It is essential to note that to file a provisional patent application, inventors will not need to comply with all the requirements that our legislation mandates to file a regular patent application, for example, it is not necessary to include a summary of the invention, a full description of the invention and a list of claims (art. 43). Likewise, the declarations of novelty, inventive step and industrial application of the invention referred to in art. 44 of the current Industrial Property Law. We estimate that the period of one year that the Law will grant the applicants is sufficient for them to comply with these requirements and thus submit their final patent applications. If the definitive patent application is not filed within one year, the provisional patent application is considered not to be filed.
Notwithstanding the foregoing, the provisional patent application must include a document in Spanish or English that describes the invention clearly and completely, so that the invention can be carried out by a person skilled in the technical area which the application is immersed in. If necessary, at least one drawing must be filed. At the end of the period of a year, the definitive patent application must be filed in Spanish.
Regarding the expression “completely”, the National Association of Intellectual Property (ACHIPI), recommends that it be made clear that the application should be clearly described, but not “completely”, considering that it is a stage prior to the final application.
An important aspect to highlight is the fact that the definitive patent application will retain the priority of the provisional application in order to compare the state of the art and determine if the application has novelty and inventive step. However, if the definitive application contains an extension of the scope of the invention described in the provisional patent, the modified contents will have, for all legal purposes, the date of the filing of the definitive application and not the provisional one.
Finally, the Bill establishes that the term of validity of the definitive patent application will be calculated from the filing date of the provisional patent application.
This type of application already exists in comparative law, being particularly used by applicants in United States. The American patent legislation also considers the term of one year to file the definitive patent application, and does not require to comply with excessive formalities to enable the filing of provisional patent applications. Their legislation also establishes the effective filing date of the provisional patent, making it the priority date of the definitive patent application, which will be essential to be able to analyse the requirement of novelty and inventive step from the prior art established before that date.
These is by far one of the most important improvements made to Chilean patent law in some time, and they mainly aim to ensure a more efficient and stronger IPR protection. These changes will be most welcomed by entrepreneurs, start-ups, universities and other relevant actors in the Chilean market.
We are certain that these and the other improvements that are incorporated in the Bill make Chile’s patent prosecution procedures more expedite and up to date with international intellectual property protection requirements.
Mauro Dellafiori Albala.
Daniel de Santiago Villagrán.
Head of the Patent & New Technologies Department