Chile's IP landscape

In fact, intellectual property (IP) rights allow on the one hand, safe and efficient incorporation of the creations of the human intellect into the market dynamics and on the other hand, coexistence of owners’ interests in the protected knowledge and the interests of society as a whole.

Nowadays, the international community recognises an international system which strengthens and harmonises rights and procedures applicable to creations of human intellect.

In 1994, the origin agreement for the World Trade Organization (WTO) promoted the role of IP in a globalised world. The standards considered in the agreement acknowledge the indissoluble link between IP and international trade, underlining the importance of these rights for competitive markets.

For the past 21 years, Chile has laid the foundations to achieve a more complete, effi cient and modern IP system, formed and structured as follows: Laws N° 19.996 (December, 2005) and N° 20.160 (January, 2007) incorporated important modifications to Law N° 19.039 regarding industrial property of 1991, in compliance with the requirements established in the WTO’s Trade-Related Aspects of IP Rights agreement (TRIPS) and in Chapter 17 of the Free Trade Agreement signed between Chile and the US (January, 2004).

The essential modifications and modernisations incorporated by the aforementioned laws are explained below.

Trademarks

• A new definition of trademark eliminates those elements not pertaining to its essence.

• The principle of the secondary meaning of trademarks is acknowledged. Sound marks are acknowledged. • Collective and guarantee marks are now considered.

• The protection of well-known trademarks is strengthened.

• Priority rights are defined according to article 4 of the Paris Convention.

• For efficiency, the preventive admission exam is substituted with an exclusively formal one.

• The procedures for applying and granting industrial rights are accelerated and rationalised.

Invention patents

• The protection term is increased to 20 years as from the filing of the application.

• The non-discrimination principle of patentability is consecrated by the state of the art or technology.

• In civil matters, the judge’s judicial power is changed so that if he is aware of an infringement to the owner’s rights of a process patent, he may invert the burden of proof so that the defendant himself is the one that must provide proof that he is not infringing the registration owner’s rights.

• The patentability of microorganisms is established.

• A system of exceptions to disclosure (disclosures made within 12 months prior to the application filing date) is established.

•A mechanism is proposed which allows deferral of payment of costs associated with granting a patent, for those who lack the economic means to do so. An extension of protection is established (supplementary protection) in the event of unjustified administrative delays in registration procedures.

• An extension of protection (supplementary protection) for invention patents of pharmaceutical products is established in the event of unjustified administrative delays in granting sanitary registration (marketing authorisation).

• A regime for non-voluntary or compulsory licences is established.

• Limitations are established regarding access to biological resources (Convention on Biological Diversity, 1992) and the patenting of the genome.

• Undisclosed information on pharmaceutical and agricultural chemical products is expressly regulated.

The link between patented products and marketing authorisation is consecrated at the same time as data exclusivity.

New developments

• A new name for the protection for the layout-designs of integrated circuits.

• A new title regarding the protection of undisclosed information (trade secrets).

• A new title for the protection of geographical indications and designations of origin.

• A new title relative to the observance of the industrial property rights (civil actions). In addition, the infringement control system is improved by means of criminal procedures.

• Acknowledgement of the international exhaustion of industrial property rights. Law N° 17.336 regulates copyright and related rights. This law defines protected works, moral and economic rights of creators, limitations to these rights, etc.

In the same way, it refers to the existence, validity and rights of artists, interpreters or performers, and the rights of producers of phonograms and broadcasting organisations (related rights). In the past few years, this law has been subject to important modifications and made to comply with obligations contained in the TRIPS agreement and, particularly, with the ones agreed within the framework of the Free Trade Agreement with the US.

These modifications include improvements to oversight procedures of these rights; the law is also deepened with respect to the exceptions and limitations of copyrights and related rights and it is regulated with regard to liability limitations of Internet service providers.

National protection of IP rights is complemented by the provisions contained in numerous multilateral international treaties, of which Chile is part, and IP standards are integrated within the numerous free trade agreements that Chile has signed with different countries and regional blocs.

On the subject of multilateral international treaties, we highlight the incorporation in 2009 of Chile into the Patent Cooperation Treaty (PCT) system, as well as the ratification in 2011 of the Trademark Law Treaty (TLT) and the Budapest Treaty on the International Recognition of the Deposit of Microorganisms.

The 1991 act covering the Union for the Protection of New Varieties of Plants is currently in a ratification process. Finally, we would like to point out that reforms are ongoing. In short, our country has made, and is still making, important modernisation efforts in the field of IP. Nowadays, in Chile, IP is more complex and solid. Consequently, IP professionals must rise up to meet the reality in a rational and efficient way.