Understanding intellectual property (IP) law is fundamentally important when doing business internationally. Whether you’re a startup with an innovative idea, a manufacturer or distributor dependent on patented designs, a multinational franchise importing foreign merchandise, or an ad agency outsourcing a project to a local company, a firm grasp of international IP law will be crucial to your success.
This is especially true in countries such as Chile, where certain important details of the law and related procedures may differ from those in your home country.
The purpose of this book is to look at Chile’s IP laws and procedures in enough detail to help you figure out the best way to protect your and your business’s assets. We’ll give you the essential facts, lead you through the process of obtaining IP protection, and offer other important observations and advice regarding litigation and other relevant issues.
In the chapters that follow, we’ll cover
- Copyright: protecting your original texts, code, recordings, performances, and translations;
- Trademarks: protecting your brand, company name, and logo;
- Patents: protecting your industrial inventions and innovations;
- Trade secrets: protecting your most important information;
- Domain names: establishing and protecting your web presence.
The book also covers licensing and confidentiality, including tips on drafting relevant contracts. The contracts themselves can be found in the LegalFácil Book of Contracts for Doing Business in Chile.
In the remainder of this introduction, we’ll give some background on IP law in Chile and general information to keep in mind when applying for IP protection. But first, an important question:
Do You Need a Lawyer for IP procedures?
It depends. If you have the budget, it's a good idea to hire lawyer regardless of the type of IP protection you’re seeking. If you don’t have the budget and would like to do as much as possible on your own, there are some cases when doing it alone is feasible.
For patents and trademarks, the process has many twists and turns, and it is extremely useful to have a lawyer's assistance. Registering your copyright and applying for a domain name, on the other hand, are much easier, and it is feasible to do them alone if you are organized.
Our goal at LegalFácil is to help you find the easiest, most economical, and most effective ways to handle your legal issues and complete the necessary procedures, and there are times when “doing it yourself” is just as effective and much less costly than hiring a lawyer to do it for you. But in the case of IP, the requirements and processes are complex enough that the benefits of having a good IP lawyer often outweigh the costs.
The governmental body overseeing industrial property (trademarks and patents) in Chile is the Instituto Nacional de Propiedad Industrial (INAPI, www.inapi.cl). The INAPI headquarters are located in Santiago, at Avenida Libertador Bernardo O´Higgins 194, First Floor. INAPI is open to the public Monday through Friday, 9am to 2pm.
The office overseeing copyrights in Chile is the Departamento de Derechos Intelectuales (DDI, www.propiedadintelectual.cl ). The DDI office is located in Santiago, at Herrera 360. They are open to the public Monday through Friday from 9am to 2pm.
NIC Chile (Network Information Center Chile, www.nic.cl) oversees domain names. It is officially part of and run by the Universidad de Chile. You can apply and pay for your domain through the NIC Chile website. Their offices are located in Santiago, at Miraflores 222, 14th floor. They are open to public Monday through Thursday from 9am to 5:45pm and Friday from 9am to 4:45pm.
Intellectual property law has been developing for over two hundred years, and the general trend of that development is toward a global uniformity. Many of the laws regarding copyright, trademarks, patents, and trade secrets are determined by international treaties comprising the majority of nations – Chile included in almost all of them. Chile is also party to over 60 free trade agreements (FTA's), including two extremely important ones with the U.S. and the EU, which have propelled the rapid modernization of Chile’s IP law.
Here are the main IP-related treaties and FTA’s that Chile belongs to:
- Berne Convention: the major international treaty governing copyright;
- Paris Convention for the Protection of Industrial Property: the main international agreement concerning industrial intangible property, i.e., patents, trademarks, and trade secrets;
- Agreement on Trade-Related Aspects of Intellectual Property Rights, commonly known as the TRIPS Agreement: incorporates the Berne Convention and the Paris Convention, along with additional regulations. It came into force as part of the formation of the World Trade Organization in 1995;
- Patent Cooperation Treaty (PCT): an important and helpful treaty that provides a standardized and unified procedure for patent applications across all member countries, the consequences of which will be explained in the chapter on patents.
The TRIPS Agreement, the Berne Convention, the Paris Convention, and many of Chile’s FTA’s establish certain minimum standards of IP law which every signatory must protect; Chile thus abides by these basic international standards. Beyond these basic standards, however, its national IP law may differ in certain ways from that of your home country.
The one major treaty to which Chile is not yet party is the Madrid Protocol of the Madrid Agreement, which plays a similar role for trademarks as the PCT does for patents. Chile’s absence from the Madrid Protocol means that, if you have already applied for a registered trademark in some other country before applying in Chile, none of the procedures or paperwork from the first application will be relevant to your Chilean application; you must do the entire application from scratch. This distinction will be further explained below in the section on territoriality, as well as in the chapter on trademarks.
Chilean IP Laws
The two important laws governing Chilean IP law and procedures today are the following:
- Law N° 19.039, which covers all industrial property protection, including trademarks, patents, and (to a limited extent) trade secrets;
- Law N° 17.336, which covers copyright protection, including for textual content, software code, satellite signals, artistic works, performances, among others.
In 2007 and 2010, these laws were updated to comply with the international treaties mentioned above.
IP protection in Chile (as elsewhere) is territorial. That is, Chilean law can only protect a trademark, patent, or trade secret within its own borders, and in order for you to own the rights of a trademark, patent, or trade secret in Chile, you must protect it appropriately in Chile.
Copyright is a special case within the territoriality rule, because you are considered to have copyright protection in all countries party to the Berne Convention, including Chile, as soon as your work is first published in any member country. It is only the exact extent and enforcement of that protection which varies from country to country.
As we explain in the next chapter, however, it is highly recommended that you obtain copyright protection in Chile for any original work that you create or own, especially as documentation showing your registration is the most reliable and effective proof of copyright when litigating against an infringement.
Sometimes people wrongly misunderstand the premises of the Patent Cooperation Treaty and the Madrid Protocol, believing that they allow for "international" patents and trademarks. This is not the case. Intellectual property law is always territorial; only the IP offices of individual countries have the power to grant these registrations, and each has its own national norms. Thus, neither the PCT nor the Madrid Protocol grants international registrations. Rather, they simply streamline certain procedures so that it is easier to apply for registrations in multiple countries.
Obtaining IP protection is generally bureaucratic and paperwork-heavy, in Chile as elsewhere. Although some form of e-filing is available for copyright, trademarks and patents, these systems are new, undeveloped, and not as trustworthy as one might hope. Until these systems are updated, we recommend applying for IP protection in paper and in person for copyright, trademark, and patents. (E-filing for domain names is much easier and more trustworthy.)
Any document from outside of Chile that you intend to use for an IP application must be legalized at the Chilean consulate in the country where it originated. Chile is not yet part of the Apostille Convention (a treaty designed to simplify international legalization of documents, formally known as the Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents), so Chilean institutions do not yet recognize documents with Apostille certification.
IP Court System
In Chile, lawsuits dealing with IP matters are decided by the regular courts, either criminal or civil, depending on the case and the types of damages sought by the plaintiff. Importantly, these courts do not specialize in IP cases specifically; the judges are not IP experts, and there is no priority given to IP cases.
There is, however, a specialized administrative tribunal, called the Tribunal de Propiedad Industrial (Industrial Property Tribunal) that hears and decides appeals filed against INAPI's decisions regarding the granting or rejecting of trademark and patent registrations, as well as appeals for extensions of protection due to delays in the registration process.
Consequently the procedures, pace, and outcomes of IP cases may differ significantly from those in your home country. We devote an entire chapter to the details of – and our recommendations for – Chilean IP litigation.
Getting it Right
Thanks to the international standards governing much of global IP law, the IP law in Chile generally meets the expectations of most foreigners looking for IP protection here. But “the devil is in the details,” and we hope this book will help you better understand those details, so that you can safely avoid all IP infringements and successfully obtain the IP protection you deserve.