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10 keys to understanding the new Intellectual Property Law in Chile

Last Monday, July 5, the Chilean Official Gazette published the new Intellectual Property Law recently approved, which modifies its current 1991 regulations. That marks the beginning of the countdown -approximately six months- for the entry into force of this long-awaited regulation.

This new IP Law introduces significant amendments to improve the system for the protection of Intellectual Property rights in Chile, strengthening their protection and enforcement and establishing more efficient registration procedures.

In addition to updating the legislation on trademarks, patents, designs, or trade secrets, the new IP Law introduces new and attractive elements that applicants will be able to use from now on, such as the provisional patent or non-traditional trademarks.

From ClarkeModet Chile we offer you a preview of the main points of this new regulation

1. What is the scope and content of the so-called new Chilean Intellectual Property Law?

The so-called “Short Intellectual Property Law” is the Law that amends the current Intellectual Property Law No. 19.039 -in force in Chile since 1991-, whose consolidated, coordinated, and systematized text was established by Decree with the force of Law No. 3, of 2006, of the Ministry of Economy, Development and Reconstruction.

2.  What are the objectives to be achieved with this new Law?

The objective of the Law is to improve the current Intellectual property system in Chile. The entry into force of this regulation will allow better protection and enforcement of these rights and more efficient and expeditious registration procedures, facilitating the processes for the system’s users.

3.  Why is it called “Short Law”?

The law project entered the National Congress of Chile in 2018, considering several measures included in a previous law project -in 2013- that did not prosper in the Congress. The Short Law considered the main amendments proposed in the referred law project, especially those aimed at fostering and promoting innovation and productivity.

4.  In which categories of rights does it introduce amendments?

It introduces amendments in trademarks, patents, industrial designs, trade secrets, geographical indications, and appellations of origin.

5. Does the new Law include new categories of protectable rights or assets?

Yes, the new Law will allow the protection of “non-traditional” distinctive signs such as olfactory, three-dimensional, tactile, positional, and hologram marks, among others. It is provided that their representation is accompanied by a written description matching it and does not extend the scope of protection.

In patent matters, provisional patents are introduced, which will be recognized for twelve months.

 6.  What new actions does the Law introduce?

In trademark matters, the main one is the expiration of the term for lack of use. That will allow requesting the total or partial end of a trademark registration when the trademark has not been actually and effectively used within the national territory within five years from the date the registration was granted.

In patent matters, the infringement action is introduced, which will allow the legitimate owner of an invention to sue the person who obtained the patent without having the right to do so. The owner could get the registration transfer and request the corresponding compensation for damages (under the current Law, the affected party can only sue for nullity).

7.  What is the most relevant modification in terms of enforcement?

The strengthening of penalties for trademark counterfeiting. The new regulation typifies for the first time the crime of trademark counterfeiting, punishing it with a prison sentence of up to three years (previously, there was only a fine for the benefit of the Public Prosecutor). In addition, it establishes a compensation system that allows the substitution of damages for a single compensatory sum determined concerning the seriousness of the infringement, up to the amount of 2.000 monthly tax units per infringement (approx. USD 140.000).

8. Does it introduce changes in fees?

The new Law incorporates an additional fee for patent applications exceeding 80 sheets. This additional fee is one monthly tax unit (approx. USD 70) for each additional 20 sheets or fraction thereof and must be paid concurrently with the filing fee (1 monthly tax unit).

On the other hand, the option of paying annuities or a one-time fee for patent maintenance is incorporated.

9. Will the term of validity of any category of rights be modified?

On the one hand, the term of protection of industrial designs is extended from 10 to 15 years, counting from the date of application.

On the other hand, the maximum extension of the term of supplementary patent protection is limited to five years.

10. When will the new regulations come into force?

Within six months from the date of publication of the Law in the official gazette. That is expected to occur in January 2022.

Danica Mardesic