Intellectual property issuesParis Convention
Is your jurisdiction party to the Paris Convention for the Protection of Industrial Property? The Patent Cooperation Treaty (PCT)? The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)?
Yes. Chile is a party to the Paris Convention for the Protection of Industrial Property 1883, the Patent Cooperation Treaty 1970 and the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.Contesting validity
Can the licensee be contractually prohibited from contesting the validity of a foreign licensor’s intellectual property rights or registrations in your jurisdiction?
The licensee may be contractually prohibited from contesting the validity of a foreign licensor’s intellectual property rights or registrations.
Infringement of the clause containing the prohibition is punishable as a breach of the contract, thereby creating the obligation to compensate damages resulting from the failure. Despite this, the establishment of such a provision shall not prevent the intervention of the courts if it is required by the licensee.Invalidity or expiry
What is the effect of the invalidity or expiry of registration of an intellectual property right on a related licence agreement in your jurisdiction? If the licence remains in effect, can royalties continue to be levied? If the licence does not remain in effect, can the licensee freely compete?
The declaration of invalidity or expiry of the registration of intellectual property rights may affect the existence of a licensing agreement, or the obligation to pay royalties. The usual practice would be to include in licensing agreements a provision establishing that the loss of validity or expiry of the right that is the subject of the licensing agreement constitutes a breach of the agreement; the consequence of which will be the termination of the agreement and the obligation to pay royalties. If the licence does not remain in effect, the licensee could freely compete, subject to the Fair Competition Principles Act.Requirements specific to foreigners
Is an original registration or evidence of use in the jurisdiction of origin, or any other requirements unique to foreigners, necessary prior to the registration of intellectual property in your jurisdiction?
In general, a distinction must be made between industrial property rights (such as trademarks and patents) and intellectual property rights (copyright).
Regarding industrial property rights, a previous application could have an impact in terms of accrediting priority rights. However, one of the requirements for patentability is novelty, that is, that the patent for invention is new in the world.
Regarding intellectual property rights (copyright), the Copyright Act in Chile is of territorial application, which means the law protects the works of Chilean authors or foreigners domiciled in Chile. Concerning the works of foreigners not domiciled in Chile, they enjoy the protection recognised by the international conventions that Chile has signed and ratified.
Can unregistered trademarks, or other intellectual property rights that are not registered, be licensed in your jurisdiction?
Trademarks and other intellectual property rights that are not registered can be licensed in Chile. However, in the case of trademarks, the licensee will not have the legal protection of intellectual property laws, but only the protection of the agreement (the licensee may not be protected in case a third party registers a similar trademark in Chile). In the case of intellectual property rights (copyright), there are no problems since the registration is not necessary when the object of the licence agreement is a copyrighted work (such as software, a song or video).Security interests
Are there particular requirements in your jurisdiction to take a security interest in intellectual property?
No. There is no requirement to take a security interest in intellectual property in Chile.Proceedings against third parties
Can a foreign owner or licensor of intellectual property institute proceedings against a third party for infringement in your jurisdiction without joining the licensee from your jurisdiction as a party to the proceedings? Can an intellectual property licensee in your jurisdiction institute proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor? Can the licensee be contractually prohibited from doing so?
The licensor or licensee may institute proceedings against a third party for infringement of intellectual property rights if it has thus been contractually established by the parties and pursuant to what the parties have stipulated in the agreement.
According to what has been stated, it is possible to contractually prohibit the licensee from instituting the proceedings. Infringement of the prohibition is punishable as a breach of the contract, thereby creating the obligation to compensate damages resulting from the failure. Despite this, the establishment of such a provision shall not prevent the intervention of the courts if it is required by the licensee.Sub-licensing
Can a trademark or service mark licensee in your jurisdiction sub-license use of the mark to a third party? If so, does the right to sub-license exist statutorily or must it be granted contractually? If it exists statutorily, can the licensee validly waive its right to sub-license?
The licensee’s right to sub-license the trademark will depend on what has been stipulated in the licence agreement. The right to sub-license must be established in the agreement since it is not warranted by law. Therefore, the right to sub-license must be granted contractually.Jointly owned intellectual property
If intellectual property in your jurisdiction is jointly owned, is each co-owner free to deal with that intellectual property as it wishes without the consent of the other co-owners? Are co-owners of intellectual property rights able to change this position in a contract?
The distinction between industrial property rights (ie, trademarks and patents) and copyright should be made first. Regarding trademarks, there are two scenarios:
- if the co-owners register a regulation of use and control of the trademark; and
- if the trademark is registered for collective use.
In the first point, the joint owners may register a regulation of use and control of the trademark before the National Institute of Industrial Property (INAPI), which sets the rules of use and control of the trademark by the owners. Such a regulation must comply with the Industrial Property Law, otherwise, INAPI can reject it. A breach of the regulation of use and control of the trademark may imply the penalties set in the Industrial Property Law. In the second point, with the same procedure and effects, a trademark may be registered for collective use to guarantee the nature or quality of certain goods or services. In this case, the trademark may not be transferred to third parties.
Regarding copyright, the faculties inherent to the patrimonial rights (economic rights) and the pecuniary benefits of the collaborative work, correspond to the whole of its co-authors. Any collaborator may request publication of the work. Those who disagree with the publication may only demand the exclusion of their name by maintaining their patrimonial rights. That is the restriction set by the Intellectual Property Law (Copyright Act) regarding co-owner of a copyrighted work.First to file
Is your jurisdiction a ‘first to file’ or ‘first to invent’ jurisdiction? Can a foreign licensor license the use of an invention subject to a patent application but in respect of which the patent has not been issued in your jurisdiction?
Chile is a ‘first to file’ jurisdiction. However, the law provides the possibility to cancel a patent when the party obtaining the patent is not its inventor or assignee.
Chilean law only permits the licensing of already registered patents or patents in the process of being registered, since patents are industrial property rights that require registration.Scope of patent protection
Can the following be protected by patents in your jurisdiction: software; business processes or methods; living organisms?
In general, software may not be protected by patents. It is usually protected by the Intellectual Property Law (Copyright Act).
Business methods or processes may not be protected by patents as they are not considered inventions.
Plants and animals may not be protected by patents, except micro-organisms meeting general patentability conditions.
Plant varieties may not be protected by patents. However, the right of the breeder of a new plant variety is protected by Law No. 19,342 on the rights of breeders of new plant varieties.Trade secrets and know-how
Is there specific legislation in your jurisdiction that governs trade secrets or know-how? If so, is there a legal definition of trade secrets or know-how? In either case, how are trade secrets and know-how treated by the courts?
The Industrial Property Law defines trade secrets as all knowledge about products or industrial processes whose confidentiality constitutes an improvement, progress or competitive advantage for its owner.
According to Chilean law, the requirements for a trade secret are:
- being secret;
- the information has a commercial value for being secret; and
- reasonable measures to keep the information in secret.
Knowledge that could be protected as a trade secret, include:
- lists of suppliers or clients;
- systems; and
There are few cases involving trade secrets, therefore, there is no trend regarding how the courts have treated trade secrets and know-how.
Does the law allow a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties in your jurisdiction, both during and after the term of the licence agreement? Is there any distinction to be made with respect to improvements to which the licensee may have contributed?
According to our industrial property legislation, the acquisition, disclosure or exploitation of trade secrets without the holder’s authorisation, as well as disclosure of trade secrets by those parties who have had legitimate access to them but who have a duty of confidentiality, will constitute an infringement of the trade secret, provided the infringement has been made with the intention of obtaining benefit for the party itself or any other third party, or harming its owner.
In accordance with the above, it is possible to establish the restrictions in the agreement.
The Industrial Property Law contains no distinctions with respect to improvements to which the licensee may have contributed.Copyright
What constitutes copyright in your jurisdiction and how can it be protected?
The Intellectual Property Law (Copyright Act) protects the rights that the authors of intellectual works of the literary, artistic and scientific domain acquire through the sole fact of their creation, whatever their form of expression, and the neighbouring rights it establishes.
The following, among others, are especially protected:
- books, brochures, articles and written documents, whatever their form and nature, including encyclopaedias, guidebooks, dictionaries, anthologies and compilations of all kinds;
- conferences, speeches, lectures, memoirs, comments and works of the same kind, both in their oral as well as in their written or recorded versions;
- dramatic, dramatic musical and theatrical work in general, and likewise choreographic and pantomimic works, whose development has been set down in writing or in another form;
- musical compositions, with or without lyrics;
- radio or television adaptations of any literary production, the works originally produced by radio or television, and also the corresponding librettos and scripts;
- newspapers, magazines or other publications of the same kind;
- photographs, engravings and lithography;
- cinematographic works;
- architectural projects, sketches and models, and mapping systems;
- geographical or armillary spheres, and also plastic works related to geography, topography or any other science and, in general, audio-visual material;
- paintings, drawings, illustrations and similar works;
- sculptures and similar figurative works of art, even though they may be applied to industry, provided their artistic value may be assessed separately from the industrial character of the object to which they are incorporated;
- scenographic sketches and the respective sceneries if the author is the sketch artist;
- adaptations, translations and other transformations, if they have been authorised by the author of the original work if it does not belong to the public domain;
- videograms and slide shows;
- computer programs, whatever their mode or form of expression, and source programs or object programs, including their preparatory documents, technical descriptions and user’s manuals;
- data collection or collection of other materials, in typewritten or any other form, which, owing to the selection or disposition of their contents, constitute creations of an intellectual nature. This protection does not include data or materials themselves and is to be understood despite any subsisting copyright regarding the data or material included in the collection; and
- textile designs or models.
The law establishes a series of civil and criminal measures aimed at protecting intellectual property from infringements.
Within the framework of proceedings for copyright infringement, the court may, at the plaintiff’s request, decree one of the measures mentioned below.Injunctions
The court may, at any stage during the proceedings, order the following injunctions:
- to immediately suspend the sale, circulation, display, performance, representation or any other form of allegedly infringing exploitation;
- to prohibit executing or performing any acts and contracts on certain properties, including the prohibition to advertise or promote the products or services that are the subject matter of the alleged infringement;
- to retain allegedly unlawful copies;
- to retain or seize any materials, machinery and implements that have been used for the production of allegedly unlawful copies or for the allegedly infringing activity, where necessary to prevent further infringement;
- to remove or dispose of any devices used in the unauthorised public communication, unless the alleged infringer guarantees that he or she shall not resume the infringing activity;
- to appoint one or more inspectors; and
- to attach the product of recitation, representation, reproduction or performance, until reaching such applicable copyright amount as reasonably established by the court.
The court may order the infringer to pay damages.Additional penalties
The court, upon making effective the payment for damages, may order, at the request of the affected party, the delivery, sale or destruction of the copies of the work that have been manufactured or put into circulation infringing his or her rights, as likewise that of the material that serves exclusively for the illegal manufacture of copies of the work and the seizure of the product of the recitation, representation, reproduction or performance.Publication
The court may order, at the request of the affected party, the publication of the decision, with or without stating the grounds for it, in a newspaper of the affected party’s choice, at the expense of the infringer.Criminal actions
Copyright infringement can also be pursued with criminal actions sanctioned with imprisonment and fines.
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4 January 2021