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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

For an invention to be patentable, it must be novel, involve an inventive step and be capable of industrial application. Chile follows the international criteria for patentability. 

What are the limits on patentability?

Inventions must relate to a technical field, insofar as the invention relates to an object or procedure with a specific utility. In other words, a patent is a solution to a technical problem within an industrial activity.

To what extent can inventions covering software be patented?

Software is protected under the Intellectual Property Act. Nonetheless, software can be protected through the patent system. Following the criteria laid out in US doctrine, software can be protected if it is part of an apparatus or system that has a specific application. However, a discussion on this point has not yet been elucidated in doctrine or case law. 

To what extent can inventions covering business methods be patented?

In accordance with the Patent Act, a patent cannot be obtained for:

  • systems;
  • methods;
  • economic, financial or commercial plans and principles;
  • business plans or plans for simple verification or supervision; and
  • purely mental or intellectual activities or gambling activities.

To what extent can inventions relating to stem cells be patented?

Stem cells are considered discoveries, as they exist in nature. Therefore, they cannot be patented. Under Chilean law, the following are unpatentable:

  • parts of living beings as they are found in nature;
  • natural biological procedures; and
  • biological material that exists in nature or that can be isolated, including genomes or germplasms.

Nevertheless, procedures using one or more biological materials and products directly obtained from those procedures are patentable, as long as they are novel in the sense that the biological material is adequately described and the industrial application is explicitly outlined in the patent application.

Are there restrictions on any other kinds of invention?

In accordance with the Patent Act, surgical or therapeutic methods of treatment for humans or animals, and diagnostic methods applied to humans and animals, cannot be patented. However, the products used in these methods are patentable.

Further, the act prohibits the registration of new use for, or changes to the form, dimensions, proportions or materials of, goods, objects or elements that are already known and employed for specific purposes. However, if the new use involves a technical problem which did not previously exist and complies with the novelty requirement, it may be patentable; but changes to the dimensions, proportions or materials of the article, object or known element are required in order to obtain the indicated solution to the technical problem.

Finally, inventions whose commercial exploitation must be prevented in order to protect the following are not patentable:

  • national security;
  • moral codes;
  • norms of good behaviour;
  • public order;
  • human or animal life or health; or
  • plants or the environment. 

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

Chilean law has a grace period, referred to as ‘supplementary protection’. A grace period may be requested with six months of grant of a patent if there has been an unjustified administrative delay in granting the patent (ie, where the patent was granted five years after filing of the application or three years after the requirement for examination – whichever occurs later).

This protection will apply only for the period proved as an unjustified administrative delay. 

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Oppositions against a patent application may be filed based on the fact that the application is not novel or lacks inventiveness. Oppositions must be filed within 30 working days of publication of the application in the Official Gazette.Likewise, it is possible to request the annulment of a granted patent on the same grounds.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Patents cannot be challenged outside the courts. In accordance with the Patent Act, the Patent Office will determine the validity of a patent.

How can patent office decisions be appealed in your jurisdiction?

Under Chilean law, any decision that affects a party can be appealed. Any Patent Office ruling can be appealed and a final decision will be issued by the Industrial Property Court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

The timeframe to obtain a final decision for a patent application is approximately two to three years. An applicant should budget for the following costs:

  • government fees (filing application) – $95;
  • publication expenses – approximately $40;
  • examiner fees – approximately $900;
  • government patent maintenance fees (for the first 10 years) – $285; and
  • government patent maintenance fees (after 10 years) – $380.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

In accordance with the Chilean patent system, there are two ways for a patent owner to enforce its rights. The first is to file a civil action before the civil judiciary. The second is to file a criminal action, which will be investigated by prosecutors and judged by a panel of judges. Criminal actions aim to punish those that maliciously manufacture, use, offer, introduce into the market, import or possess a patented invention for commercial purposes. 

What scope is there for forum selection?

In accordance with Chilean law, criminal actions must be filed at the place where the infringement occurred. In civil matters, the action must be filed before the court where the defendant is domiciled.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

There are three stages of civil proceedings. In the first stage, the parties must submit allegations to support their claims. In the second stage, the parties must submit evidence. Finally, the court will issue its decision, which takes between four and eight months.

The procedure is different for criminal proceedings, as the prosecutor must investigate the crime based on the criminal action filed before the court. If the prosecutor charges anyone, the trial begins with an accusation, followed by a suit before a panel of judges. 

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Under Chilean law, patent registration is protected by civil law and, in particular, by the courts. However, defendants sometimes attempt to delay proceedings by filing annulment actions. While this strategy sometimes succeeds, legally speaking, the system must protect registered patents.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

The Patent Act prescribes that issues relating to a patent’s validity must be brought before the Patent Office. Consequently, a party cannot challenge the validity of a patent through the courts. However, any interested party can challenge the validity of a patent at the Patent Office.

At trial
What level of expertise can a patent owner expect from the courts?

The regular courts have no specialist judges to address patent infringement suits. The Patent Office, which has expertise in this field of law, determines the validity of patents.  

Are cases decided by one judge, a panel of judges or a jury?

It depends on the jurisdiction of the suit. Civil suits are decided by one judge at first instance and by a panel of judges on appeal. Criminal suits are decided by a panel of judges. 

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Chile has no jury system.

What role can and do expert witnesses play in proceedings?

Expert witnesses play an important role in the Chilean patent system, as all decisions relating to patents are based on their opinions. Patent disputes are often complex, as they require specific knowledge about the field of technology involved. As such, the courts often consider expert witnesses’ opinions.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Chilean law contains no explicit reference to the doctrine of equivalents; nor is this policy explicitly mentioned in case law. However, the doctrine has been used in case law without explicit reference – for example, in some cases infringers have been punished for imitating a patented invention. This could serve as grounds for the doctrine of equivalents.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunctions can be obtained if the plaintiff can prove real and qualified grounds to the court. Further, the plaintiff must outline the goods that will be covered by the injunction and the damages that the injunction may generate.  

How are issues around infringement and validity treated in your jurisdiction?

N/A.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The Chilean legal system is based on civil law and therefore decisions affect only the parties involved in the particular dispute. As such, similar issues from other jurisdictions are not generally considered. 

Damages and remedies
Can the successful party obtain costs from the losing party?

The successful party can obtain costs from the losing party. 

What are the typical remedies granted to a successful plaintiff?

In accordance with the Patent Act, a successful plaintiff can obtain:

  • a cease and desist order;
  • an indemnity for damages;
  • necessary measures to prevent the infringement from continuing; or
  • an order for publication of the decision in a newspaper of the plaintiff’s choice, at the infringer’s expense. This measure applies where the decision expressly states as such.

How are damages awards calculated? Are punitive damages available?

Damages awards are calculated based on the following criteria:

  • the profits that the rights holder lost due to the infringement;
  • the profits that the infringer earned due to the infringement; or
  • the price that the infringer would have paid to the rights holder for a licence, considering the commercial value of the infringed right and any contractual licences that have already been granted.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The courts will grant permanent injunctions to a successful plaintiff where infringement will cause it damage. 

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

First-instance decisions take between two and four years. The process cannot be expedited. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

Chile has no jurisdictional fees or associated costs. However, the parties must pay for the examiner’s report or for opinions from legal experts in support of their arguments. Likewise, any interested party must pay attorneys’ fees. Attorneys’ fees are a private matter which must be negotiated by the parties. 

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

The Chilean system is modelled on civil law and any party that considers a ruling damaging to its interests can appeal before the Industrial Property Court. This process may take one to two years. 

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

No other dispute resolution options exist.