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Enforcement through the courts
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?
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.