CONTROVERSY REGARDING SUPPLEMENTARY PATENT EXTENSION IN CHILE

05 / 02 / 2016

The Chilean Industrial Property Law was amended on 2007 to comply with the standards included in the FTA signed with the US, including a new chapter directed to the Supplementary Protection of patents.

The same stated that within 6 months as from the granting of a patent, the owner is entitled to request a term of Supplementary Protection, for compensating unjustified administrative delays, provided that the prosecution term has lapsed more than 5 years from the filing date or 3 years from the examination request, whichever is longer.

Also, this chapter included the possibility to extend a patent to compensate delays in the granting of a related sanitary registration, reading that within the 6 months of obtaining a Sanitary Registration for a pharmaceutical product protected by a patent, a term of Supplementary Protection can be requested for that part of the invention containing the pharmaceutical product, provided that unjustified delay has existed in the granting of the said registration. In this case, as long as the term to obtain the sanitary registration lapsed more than one year.

However, a controversy between the National Antitrust Prosecutor (FNE) and the Court of Industrial Property (TPI) has been raised in the last days regarding the extensions of certain patents directed to drugs. The issue since the Court of Industrial Property (TPI) has extended patents filed and prosecuted under the old law, granting the same for 15 years from registration and not for 20 years from filing.

The FNE argues that patent extensions should be granted for patents where the patent term is counted as from the filing date only, but the TPI has decided that the law does not distinguish in this respect, and therefore all patents are eligible for patent extension term. In opinion of the FNE, to extend patents granted for 15 years from registration does not correspond as they are not subject to administrative delays in the rights they give.

According with the antitrust authorities, to extend the term of patents granted for 15 years from registration only means to establish unjustified barriers to the entry of generic and competitive products. To avoid this, the antitrust officials suggest the prosecution of a clarification act stating that extension due to unjustified administrative delays will only be possible for patents subject to the 20 years validity period counted as from application date.

Another alternative referred to, is to allow that third parties may file oppositions against extension petitions, which is not presently contemplated we expect that this dispute shall continue for a while since Chilean authorities are closely looking into this matter.
Any news in this important topic will be immediately informed.

Should you have any doubts or need more information in this regard, please contact Eduardo Molina V. – Head of the Patent Department, to: emolina@villaseca.cl.