Should You Get a Patent?
As with copyright and trademark law, patent law in Chile has strengthened greatly in the last decades, as a result of Chile’s joining several international treaties and FTA’s, including the TRIPS Agreement, the Patent Cooperation Treaty (PCT), and the Chile FTAs. As a result, the process for obtaining a patent in Chile, and the rights you’ll receive if and when you are granted one, are largely in line with international norms. The PCT in particular simplifies the patent process for applicants who have already applied for a patent in another PCT member country.
Nevertheless, there are two important issues regarding the patent process in Chile that you should carefully consider before deciding to apply for one.
The first is that, while Chilean patent law agrees to a large extent with patent law in the U.S. and Europe, it is, in practice, far easier to obtain and protect patent in the U.S. than it is in Chile. The U.S. system is set up such that patents are rewarded relatively easily, while a sophisticated judicial system is in place to resolve any consequent disputes. In Chile the opposite is true: the application and patent-granting process is designed to be rigorous and ensure against future disputes, while the judicial system is less sophisticated and specialized when it comes to patents and IP generally.
With the higher standards for granting a patent, there is greater risk that your patent won’t be granted at all. And if you are granted a patent and it is later infringed upon, it will be more difficult to protect through court action.
Given the complexity of the process and INAPI’s high standards, it is highly recommended that you evaluate carefully the convenience of applying for a patent in Chile. If you decide to move forward with patenting, it is a good idea to do so with an IP lawyer’s help. Having a good IP lawyer with a team of technical experts is a good way to ensure that you are applying correctly and for the right reasons.
Yet all of this, of course, adds up to substantial costs. Therefore it’s extremely important to determine whether it is worth it to apply for a patent at all, by doing a cost-benefit analysis and determining if the commercial benefits of owning your patent outweigh the costs of getting one.
This chapter will explain those costs in more detail, as well as give you a brief review of the main aspects of the complex application process. But let’s start with the basics of Chilean patent law, and the benefits that having patent confers.
What Qualifies for a Patent?
Patent law is designed to protect the exclusive rights of inventors and innovators to commercialize their technologies. In Chile, patents are awarded for any invention or process that meets the 3 essential criteria established worldwide:
- It is novel.
- It involves an “inventive step.”
- It has an industrial application.
An important distinction from U.S. patent law is that you cannot patent software in Chile, while in the U.S. you can. However, both Chile and US, grant copyright protection to software code.
Patents for utility models, industrial designs and layout designs (topographies) of integrated circuits involves fewer requirements and are granted for less time, as we describe below.
As with trademarks, the rules, definitions, and standards governing patent law in Chile are established in large part by the Paris Convention and the TRIPS Agreement.
The same two fundamental components of these treaties apply to patents as well, with an important different in the priority treatment time window:
- National treatment: A foreign applicant applying for a patent in Chile will complete the same process and receive the same protection as a Chilean national.
- Priority date: If you have already applied for a patent in another country, there will be a 12-month period during which you will be granted priority treatment. If and when you file your application in Chile during this time, your filing date will be considered the date you filed the first application. So if you applied for a patent in the U.S. on January 1st, you will have until December 31st to apply for your patent in Chile, during which time your date of filing in Chile will be considered January 1st.
The Patent Cooperation Treaty
The PCT is a hugely important and helpful treaty, as it facilitates (and cheapens!) the process for applying for a patent in multiple countries by allowing you to file one patent application effective multiple countries of your choosing.
The process has two parts:
- International phase: the national patent office of each country acts as a receiving office, sending all documents to the International Bureau (WIPO) for the International Search Reports prepared by International Search Authorities (ISA) and the International Publications (common to all applications). This PCT application, as processed by WIPO, and the International Search results will then be applicable in whatever PCT-compliant country in which you decide to seek patent.
- National phase: the patent office of each country reviews the application and grants the protection for their territory. If you file your patent in the U.S. under the PCT procedure, and you want to file for patent protection in Chile, you don’t have to start from scratch: you just have to request protection in Chile when the national phase begins.
Another advantage of the PCT procedure is that the International Search Report carried out for this process will enable the applicant a clearer perspective on the patentability of the invention, which will be helpful later in your patent examination before the Chilean patent office.
Also, on top of the 12-month priority period granted by the Paris Convention, in most of the countries party to the PCT (including the U.S. and Chile), you are granted a further 18-months period before beginning the national phase. In these cases, the applicant has 30 months from the filing date to decide whether he has a commercial interest in obtaining patent protection in these countries.
Applying for Your Patent
It’s important to do a preliminary evaluation and search for your patent, in order to gauge the likelihood of your application’s success. A good IP lawyer will have a team of contracted experts; in some cases, these experts will have worked previously for INAPI and will have a solid knowledge of the requirements. Through a preliminary search can be costly, at about 400,000 Chilean pesos, or US$1,000, but it can help guarantee the success of your patent, and therefore justify the significant costs of the application process itself.
National & International Procedures.
If you are a first-time applicant (if you have not already applied for your patent in another PCT-compliant country), the exact procedure for your patent application will depend on whether you want to apply for a patent only in Chile or for a PCT patent (applicable to every PCT-compliant country of your choosing).
Both kinds of application require the paperwork and will go through the review process described in the following sections, and both will be reviewed by INAPI and its experts according to the criteria and standards specific to Chile. But timing differs between the two.
The PCT patent application must be filed before the Chilean Patent Office in the format they have prepared. INAPI will review your application to make sure it complies with PCT requirements, and then send a copy of your application to WIPO’s International Bureau. WIPO, in turn, will do an International Search of your patent via an International Search Agency (ISA) of your choosing. INAPI recognizes the United States Patent Office (USPTO), the European Patent Office (EPO), the Korean Patent Office (KIPO), and the Oficina Española de Patentes y Marcas (OEPM) as ISAs.
An International Search Report that is favorable from an applicant’s point of view will strengthen his application before the national Patent Offices, backing his arguments for the granting of his patent. But bear mind that regardless of the results of the International Search, the national patent office will run their own search and analysis of the application to determine if you application meets its own national standards. In Chile, only INAPI grants patents, so its experts are the ones that determine if your application is valid for patent protection in Chile.
In other words, the PCT application and the international search make your application for a patent in Chile easier, but they do not guarantee that you will be granted a patent in Chile.
The PCT application may be prepared with the help of a software called PCT- Easy that can be downloaded at WIPO or at INAPI (http://www.inapi.cl/portal/institucional/600/w3-article-1782.html#i__w3_ar_articulo_completo2_1_1782_Descargar). However, the application and documents must be filed before INAPI in paper.
Required Information & Documentation
To file a patent application in Chile, including for a utility model, industrial design or drawing, or layout designs (topography) of integrated circuits, the following information and documentation are required:
- Application form: this can be downloaded from INAPI’s web page: http://ion.inapi.cl:8080/Patente/FormulariosImprimibles.aspx. It includes information identifying the applicant, inventor and representative, type of application, priority details, if any, and the title of the invention.
- Technical sheet: also found in INAPI’s web page, it must include a summary of the invention and the problem it solves, and it may contain a figure or drawing if applicable.
- Specification: For patents and utility models, you must must include a clear description of the invention that allows an expert to reproduce it; the claims; a description of the state of the art relevant to the invention; a description of the drawings, if any; and examples of its use where appropriate. For layout designs (topographies) of integrated circuits, you must include an explanation of the layout designs and a description of the prototype or model submitted.
- If the applicant is a company, an assignment of rights from the inventor to the applicant company must be provided, which also needs to be duly translated.
- If applicable, the foreign priority document.
The application and documents must be filed in Spanish and documents in other languages will need to be translated to Spanish. All documents must be submitted in duplicate.
After you have submitted your application, it will be processed by INAPI in several steps:
- INAPI examines the application to ensure that it complies with the requirements, in what is called the examen preliminar (preliminary examination). If there are any observations, such as missing documents, the applicant will have 60 working days to amend or clarify. If no response is filed, the application will be declared abandoned.
- The applicant has 60 working days to request an extract of the application at INAPI, which must be published in the Diario Official (Official Gazette) at the applicant’s expense. Upon publication, there is a 45-day period for third-party objection to be filed.
- Within 60 days from the deadline for filing oppositions, whether they were filed or not, the applicant must pay the expert’s fees for the expert who will carry out the substantive examination. Expert’s fees must be deposited in a special account called “Instituto Nacional – Peritos”, account N°900122 – 1, BancoEstado, and the deposit slip must be submitted before INAPI.
- INAPI will then appoint an expert in the technical field of the application, who will accept the appointment in 20 working days. He then has 60 working days to issue a written report with a technical analysis of the application, any observations, and a statement declaring whether the application complies with the requirements of patentability.
- If there are observations, the applicant has 60 working days to file a response. The expert must issue a second report (in which case steps 2 and 3 must be completed again, including a second round of fees).
- If the expert´s report concludes that patentability requirements are met (and if and when all reviewed formalities have been met), the National Director of INAPI will issue a decision granting the patent.
- The applicant must then request a payment order at INAPI for the final round of fees to be paid at any bank in Chile, and submit the payment order stamped by the bank at INAPI.
- INAPI grants a registration number for the patent. If you want a certificate that acknowledges the registration, it must be requested.
Duration of Patent
Patent protection is granted for 20 years from the date of filing before INAPI.
The only requirements for utility models are novelty and industrial application; no inventive step is required. Protection is granted for 10 years from the date of filing before INAPI. For industrial designs and drawings as well as layouts designs (topographies) of integrated circuits, the only requirement is novelty. They are granted protection for 10 years from date of filing.
Timeframe of Application Process
Though you can file your application in a matter of hours, the entire patent registration process may take up to 4 years. Utility models, industrial design and drawings and layouts designs (topographies) of integrated circuits may take approximately 8 to 18 months.
Compared to copyright and trademark costs, patents are expensive, especially for the budgets of individuals and small companies. This has mostly to do with the complexity of the process and the need for very knowledgeable and experienced (and expensive) experts who consult both INAPI and lawyers. The following is a summary of the expenses for a national application.
- Official fees: These come t a total of 7 UTM for the 20 years of protection. When you file your patent application, you must pay 1 UTM that day. You must pay 3 UTM when your patent is granted. Before the end of the first ten years, a payment of 4 UTM must be made to cover the second decade of protection. If this payment is not met, the patent registration will expire.
For utility models, industrial designs and drawings, and layout designs (topographies) of integrated circuits, the official fees are a total of 4 UTM. An initial payment of 1 UTM must be submitted with the filing of the application, and then a payment of 1 UTM once the registration is granted. Before the end of the first 5 years, a final payment of 2 UTM must be made for the following 5 years of protection.
- Publication: The publication of an extract of your application in the Diario Oficial is paid to the Gazette. These fees depend on the length of extract, but you should expect to pay about $50.000 Chilean pesos (about US$100).
- Expert’s fees: The fees of the expert that carries out the substantive examination and report are set by the Director of INAPI periodically. In 2012, the expert’s fees for each report in a patent application were $427.000 Chilean pesos; in a utility model application, $343.000; and for industrial design and drawings and layout designs (topographies) of integrated circuits, $287.000. Bear in mind that more than one report may be needed in each application and you must pay for each report.
- Legal Fees: These will depend on your particular casse. If you request a preliminary search by your lawyer and his or her team of experts, expect to pay at least $800,000 Chilean pesos, or US$1,500. Additional legal fees will come to at least $2,000 for the application process alone, and likely more, especially if there are complications such as an opposition from another party, INAPI, or one of INAPI’s contracted experts.
Fees for PCT Applications: Expenses regarding PCT applications are a different matter. If filed at INAPI, there are at least 3 fees that must be paid during the first month after the filling:
- Transmittal Fee, paid at INAPI as a Receiving Office, US$130
- International filing fee, paid at INAPI for the International Bureau at WIPO, US$1,419
- Search Fee, paid at INAPI, for the Office chosen by the applicant as International Search Authority (ISA) to prepare the International Search Report. These fees vary depending on the office chosen as ISA:
Spanish Patent and Trademark Office (OEPM): 1,785 euros
United States Patent and Trademark Office (USPTO): US$2,080
European Patent Office (EPO): USD 2.419
Korean Intellectual Property Office (KIPO): USD 1.167
All these payments must be made in Chilean pesos at the offices of INAPI or by deposit to Instituto Nacional de Propiedad Industrial — PCT in the account N° 000−0−0900157−3, BancoEstado.
Litigation: Injunctions & Damages
Chile does not have an elaborate judicial system devoted exclusively to IP, as the U.S. and certain other countries do. Though there is one higher IP court, IP cases are tried initially in regular courts – civil or criminal, depending on the case – where the judges are not expert in IP issues.
There are also no statutory damages awarded in IP cases in Chile, as there are in the U.S. Instead, a plaintiff suing for damages must prove exactly how and to what extent his or her commercial interests were affected – which is not always an easy task.
Litigating IP cases in Chile, then, is generally a time-consuming, difficult, costly, and often unfruitful process. So if you find that your IP rights have been infringed, it’s essential that you do a cost-benefit analysis to determine whether it’s worth it to seek damages at all – weighing the likely costs of a court battle against the commercial effect of the infringement.
Injunctions, on the other hand, can be obtained – usually within a matter of weeks – depending on the evidence you can bring forth. Your lawyer and his or her team of IP experts can help you with the cost-benefit analysis and help you determine the likelihood of success.
Your lawyer will also handle the litigating process, of course, but here is a brief look at what will happen should you decide to act.
The first step is to send cease-and-desist letter, or carta de aviso, to the infringing party. Importantly, by law, this letter cannot contain a threat or anything that could be interpreted as threatening; the language must be extremely diplomatic, simply stating the IP holder’s rights and asking the infringing party to stop violating them.
If the infringing party does not comply with your order, you may go to a civil court judge and request an injunction (medida cautelar). An injunction is a pre-judicial measure, meaning the case must go to court eventually.
Going to Court
Should a copyright holder go ahead and bring an infringement case to court and win; he might win an injunction, a cease of use order, and/or rewards for damages. Rewards vary depending on the damages, but the amount is ultimately left to the judge’s discretion, based on the plaintiff’s demonstration of what the damages actually were. Again, in Chile there is no such thing as statutory damages for copyright infringement, or punitive damages, and generally the rewards are small as compared to those in the U.S.
Damages are not rewarded for the period during the IP application process; and though you may request an injunction during the application process, the courts generally require you registration before granting one.
The Rights of Others
We urge you to avoid infringing on the IP rights of others. Be extremely careful to vet the usability of any content, products, or services you might use for which you do not own the IP rights yourself. This is particularly important when working with freelance or “for higher” employees, such as writers, translators, designers, etc., or when outsourcing jobs to other companies. In all cases, it is vitally important to include a clause in the employee’s or contractor’s contract guaranteeing that they will not infringe on anyone’s copyright while under your charge.
What the law says – The importance of clear, explicit labor contracts
Under Chilean law, if an employee creates an invention while on the job and/or using confidential information to which she has access because of her job, then the invention is the property of the employer.
It’s easy to see, however, that there will be ambiguous cases that can lead to legal issues. To ensure against these ambiguities, we recommend that employers not rely on the law’s language to protect their entitlement to employee inventions, and instead establish their right explicitly within a clause in the labor contract.