24 / 09 / 2021

Opinion column by Eduardo Molina, partner of Villaseca Abogados, leader of the patent area, originally published on El Mercurio Legal.

Law No. 19,039 on Industrial Property will fulfill on September 30 no less than 30 years as the framework law of the multiple amending laws issued in recent years.

Its latest amendment corresponds to law 21,355, published in the Official Gazette on July 5, 2021, which will enter into force as soon as its respective Regulations are prepared (for which there are six months from that date).

For the framework law 19.039 of 1991, our country had to wait no less than 60 years (since Decree 958 of 1931), to have a completely new law on the matter. I wonder, will we have to wait another

30 years to have a completely new Industrial Property law and thus add the fateful 60 years between new texts? I hope not, since the advancement of the technique in recent years has made our framework law completely obsolete and the four amending laws (L19.996, L20.160, L20.569, and L21.355), have allowed only certain advances, which have been an important consequence of international treaties ratified by Chile, but have deprived us of the paradigm shift that is needed, particularly for the development of innovation in the national field.

A much more robust protection system capable of assuming new forms of protection for the inventions of the future is missing. What will happen to inventions on artificial intelligence, nano products, biotechnology, and many other fields of science that did not exist a few years ago? Should innovation accommodate the currently limited forms of protection, or would it not be more logical for these to accommodate these new forms to protect them? Why don’t we privilege institutions capable of promoting local technological advances, such as broader and more expeditious protection for utility models? On the other hand, it remains unclear regarding the inventions of services, and nothing substantive exists about voluntary licenses.

Within what the short law includes, advances are recognized in administrative and substantive matters. Administratively, the digitization of many of the procedures that were normally done on paper and through notifications by physical means is applauded. As of its entry into force, these may be carried out through electronic means, which will undoubtedly speed up the processing of applications.

Regarding costs and payment of fees, this new law will facilitate the filing of new applications, since applicants will be able to obtain a filing date even when the payment of the filing fee has not been credited, and this may be postponed for up to 30 days. of granted the date of presentation. However, not everything is good concerning costs, since an additional fee is added to patent applications that exceed 80 sheets, which will undoubtedly make it more expensive to present inventions that, given their complexity, require more pages.

On the other hand, the figure of provisional patents is included again, after being missing for many years. These may be used by those inventors who do not have all the necessary background information ready for a complete presentation, will be valid for one year, and will serve as a priority for the aforesaid term for the presentation of the definitive patent.

The action of forced patent transfer is also added, which will protect the rights of true inventors against attempts by third parties to appropriate their inventions. Thus, the true inventor may claim the transfer of the patent obtained by a usurper, together with the corresponding compensation for damages. Today, the true owners of the invention can only demand the nullity of the patent, thereby losing the right to recover it and thus exclude third parties from its use.

The deadlines to require supplementary protection in patent terms, due to unjustified administrative delays, drop drastically from 6 months to just 60 days. It is an insufficient period, since, to determine the existence of these delays, a complete and exhaustive review of the time incurred during the patent processing must be carried out, there is, on the other hand, no drastic regulations that oblige the Inapi and experts to process applications more expeditiously.

There is good news for designers as the protection terms are extended from 10 to 15 years for industrial drawings and designs. Likewise, the new figure of the certificate of deposit of industrial drawings and designs is created, which will allow applicants to opt for the general registration process (that is, with background analysis) or require an abbreviated procedure to obtain a certificate of deposit. This certificate of deposit will allow its holder to obtain a certain date of presentation but will not be able to exercise the infringement actions.

In summary, the so-called short law advances in the harmonization to international standards of some of the concepts included in our original law 19.039, but, without a doubt, it leaves out the opportunity to modernize our legislation in a way that allows us to take a really important step to the future of innovation.