Answer ... Law 19.039 on Industrial Property Law, the Regulations on Law 19.039 and the National Industrial Property Institute Guidelines.

Answer ... Inventors and their assignees by contract or law (ie, work for hire), which may be either individuals or legal entities.

Answer ... The exclusive right to use, produce, sell and commercialise the invention in any way; and in general, the right to execute any commercial exploitation of the same. In practice, as in most countries, a patent is a negative right which gives the owner the right to exclude others from using the patented invention. Exercise of the right may be subject to other regulations (eg, health regulations for pharmaceutical patents).

Answer ... A patent owner may enforce its rights through civil and criminal proceedings initiated before the judicial courts. However, there are no specialised IP courts before which a patent infringement lawsuit can or must be brought.

Answer ... A patent lasts for 20 years from the filing date. With regard to the Patent Cooperation Treaty (PCT) national phase, the 20 years are calculated from the international PCT application filing date. When it comes to civil actions, the patent owner has four years from the date of the infringement to enforce its rights and five years in the case of criminal offences.

Answer ... The National Industrial Property Institute (INAPI) is empowered by law to act as the patent office for the registration of patents and designs in Chile.

Answer ... The costs of registration typically range from between $4,000 and $6,000 in professional fees and $1,100 in government fees.

Answer ... Lack of patentable subject matter, novelty, inventive step or industrial application. An application may also be rejected in case of lack of unity of invention, support of the claims in the specifications, non-reproducibility of the invention or definiteness of the claims.

Answer ... Patent Prosecution Highway (PPH) programmes that INAPI has signed with the patent offices of different countries (eg, the United States, China and Japan) under the PCT PPH and PPH-Mottainai modalities.

Answer ... Standard medical method claims are not accepted. These must be drafted in the Swiss type form.

Answer ... Yes, it is possible to request a patent extension term, known as ‘supplementary protection’ (Article 53 of Law 19.039), provided that:

• there has been an unjustified administrative delay in the grant of the patent; and
• the patent was granted more than five years from the filing date of the application or three years from the request for examination, whichever is the later.

The request must be made to the Industrial Property Tribunal.

Answer ... Patents may be obtained for all inventions – whether products or methods – in all fields of technology, with the exception of the exclusions on non-patentable subject matter set out in Article 37 of Law 19.039. These include software, business methods and medical procedures. Without prejudice to the foregoing, if software is included within a system, then that system and other technical elements may be patented.

Answer ... Yes, an appeal may be brought to the Industrial Property Tribunal within 15 days of the date on which the rejection notice is issued.

Answer ... The National Industrial Property Institute (INAPI) has exclusive jurisdiction to resolve validity issues regarding patents through an administrative procedure. The decision may be appealed before the Industrial Property Tribunal, whose decision may in turn be subject to a cassation action before the Supreme Court.

Answer ... Through an administrative procedure initiated by an invalidation claim filed before INAPI and served personally on the patent holder or its appointed agent. The invalidation claim must be filed and served within five years of grant of the patent. The procedure involves a term for responding to the claim, an evidentiary term and the appointment of an examiner to review the patent on the grounds claimed by the plaintiff. INAPI will issue a decision on the validity of the patent, which may be further appealed before the Industrial Property Tribunal and subsequently before the Supreme Court through a cassation action.

Answer ... Under Article 50 of Law 19.039, the grounds are as follows:

• The person who obtained the patent is not the inventor or assignee;
• The patent was granted on the basis of erroneous or evidently deficient expert reports; or
• The patent does not fulfil the criteria for patentability and related requirements, in accordance with the law.

Answer ... INAPI will examine and evaluate the evidence on the validity of an issued patent, according to experience, rules of logic and scientific knowledge.

Answer ... Pre-grant oppositions may be brought by any interested third party (Article 5 of Law 19.039). Oppositions must be filed within 45 days of publication of the patent application (this usually occurs six months after the filing date). The opposition mechanism allows the opponent to:

• respond to office actions within the same term as the applicant (60 days, with the possibility of an additional 60-day one-off extension);
• appeal the first-instance decision (within 15 days of notification); and
• request a review of the second-instance decision before the Supreme Court through a cassation action (within 15 days of notification).

Post-grant, validity may be challenged on any of the following grounds (Article 50 of Law 19.039):

• The person who obtained the patent is not the inventor or assignee;
• The patent was granted on the basis of erroneous or evidently deficient expert reports; or
• The patent does not fulfil the criteria for patentability and related requirements, in accordance with the law.

Answer ... Any person or legal entity with an interest in its invalidation.

Answer ... Oppositions must be filed within 45 days of publication of the patent application (publication usually occurs six months after the filing date). A request for post-grant invalidation must be filed within five years of grant of the patent.

Answer ... The patent does not fulfil the criteria for patentability; or the applicant is not the inventor or the assignee, as inventions may be patented only by the real inventor or assignee.

Answer ... If the opposition is accepted, the patent application will be rejected. If the opposition is dismissed, INAPI may still reject the application under its own findings; otherwise, the patent application will be accepted. In all cases, the first-instance decision may be appealed before the Industrial Property Tribunal by either the applicant or the opponent.

Answer ... The legal standard to resolve the opposition or challenge is the examination and evaluation of evidence according to INAPI’s experience, rules of logic and scientific knowledge. The plaintiff bears the burden of proof in this procedure.

Answer ... Yes, the decision may be appealed before the Industrial Property Tribunal, on the grounds that the first-instance decision has caused harm to the appellant’s interests by its failure to consider the arguments, the facts and/or the law when deciding on the patentability requirements.

Answer ... A patent may be rendered unenforceable due to:

• the application of exceptions such as the Bolar exemption in the case of the import, export, use or production of a patented pharmaceutical product for the purposes of obtaining a sanitary authorisation (Article 49 of Law 19.039);
• international rights exhaustion, in the event of further commercialisation of a patented product that was lawfully acquired in commerce by any third party from the rights holder in any country; or
• a compulsory licence granted on the grounds set out in Article 51 of Law 19.039.

Answer ... There are no inequitable conduct standards in Chilean patent law. Inequitable conduct may not be used as a defence in a patent infringement case, although it may be used to support an antitrust claim in case of an abuse of IP rights.

Answer ... As a general principle, the applicant is responsible for the declarations on the novelty, property and utility of the invention. The Regulations on Law 19.039 provide that the specification must refer to the prior art relating to the invention.

Answer ... An unauthorised act involving the patent invention (eg, use, reproduction, sale or any other form of commercial exploitation) that falls within the scope of the claims.

Answer ... Although this is not established in Chilean law, a court has applied this in a civil infringement case (Milton Astudillo Capetillo v CODELCO, Second Court of Calama, C-50763-2009) under a triple identity rule, by following international doctrine on the matter and adopting a broad interpretation of the Regulations on Law 19.039, which define the term ‘technical equivalent’, holding that such equivalents may infringe a patent application.

Answer ... No, there are no extraterritorial rules in Law 19.039 for patent infringements outside the jurisdiction.

Answer ... There are no written standards. Wilful infringement is required in order to bring a criminal action against the infringer; an infringement is wilful if the infringer knew of the existence of the patent and proceeded with the infringement nonetheless.

Answer ... The patent holder (or holders, acting jointly), and its licensees and representatives, where these are acting with a special power of attorney for litigation purposes.

Answer ... Pleading standards are established in the Civil Procedure Code (Article 254), which requires the following:

• the designation of the court before which the suit is brought;
• the name, address and profession or trade of the plaintiff and his or her representatives, and the nature of the representation;
• the name, address and profession or trade of the defendant;
• a clear exposition of the facts and legal arguments on which the suit is based; and
• a clear and precise enunciation of the petition that it is made to the court.

Answer ... In both civil and criminal venues, either for damages or for criminal penalties. Unfortunately, there are no specialised courts to hear infringement matters.

Answer ... In civil proceedings, the claim must be filed at the courts of the district of the city in which the defendant has its domicile.

In criminal proceedings, the case will be heard by the courts of the district of the city in which the infringement occurred.

Answer ... In civil proceedings, the plaintiff bears the burden of proof. The plaintiff may request the judge to order the production of certain identified documents that are of interest to the plaintiff for fact purposes.

In criminal proceedings, the plaintiff also initially bears the burden of supporting the claim; but the district attorney may intervene and request further investigation by the police in order to determine the facts (eg, through a search of the defendant’s premises) that will help the court to decide the case.

Answer ... Yes, in criminal proceedings the district attorney may also intervene and request further investigation by the police in order to help determine the facts where this would be difficult for the plaintiff to do by itself.

Answer ... In civil proceedings, once a claim has been filed and served on the defendant, the parties will have the opportunity to settle the case at a hearing before a judge, in which the defendant will respond to the claim if no settlement is reached. An evidentiary period may then commence, depending on the parties’ allegations and defences; once this period ends, the judge will issue his or her decision.

In criminal proceedings, once a claim has been filed, the district attorney may initiate a formal investigation with the intervention of the police before a pre-trial judge. After gathering sufficient evidence, the prosecutor may file charges against the defendant. In this context, the judge will not only guarantee the defendant’s rights, but also seek to broker a settlement between the parties. Once the formal investigation is closed (which can last up to two years), the prosecutor will have the opportunity to file an accusation against the defendant. The defendant may either accept the facts presented by the prosecutor and a determined penalty, opt for a brief proceeding before the pre-trial judge or deny the facts and continue in an oral criminal trial before a criminal court.

Answer ... The following remedies are available in civil proceedings:

• a permanent injunction for the cessation of all infringing activity;
• publication of the decision in a newspaper chosen by the plaintiff; and
• damages.

Damages may take the form of:

• compensation for damages according to the general rules of civil liability (eg, direct damages, moral damages and lost profits); or
• one of the following alternatives for compensation set forth in Law 19.039:
• • lost profits suffered by the patent holder as a result of the infringement;
  • profits earned by the infringer as a result of the infringement; or
  • a licence fee, considering the commercial value of the infringed right and other licences previously granted by the patent holder.

Damages tend to include interest and readjustments.

The remedies in criminal proceedings are:

• the application of a penalty, in particular a fine, without prejudice to any monetary settlement that the parties may reach; and
• the seizure and destruction of the infringing products, and materials and machinery used for their manufacture.

Answer ... In civil proceedings an appeal is available, on the grounds that the first-instance decision has caused harm to the appellant’s interests by not considering the arguments, the facts and/or the law.

There is no appeal in criminal proceedings – only the possibility to seek annulment of the decision before the Court of Appeals or the Supreme Court, depending on the reasons for the annulment.

Answer ... There are no general rules on discovery in the Civil Procedure Code and no discovery for patent infringement cases.

Answer ... There are no general rules on discovery in the Civil Procedure Code. Nevertheless, civil court judges may issue an order for the production of certain identified documents that are of interest to one of the parties, either before or during litigation. Criminal court judges may issue orders to the police in order to obtain relevant evidence from the defendant’s premises.

Answer ... There are no general rules on discovery in the Civil Procedure Code and no discovery for patent infringement cases.

Answer ... Any definition of the claim terms will happen during the evidentiary period, through the submissions of the parties (eg, documents, affidavits, live testimony and cross-examination of witnesses) and the intervention of technical experts, because Chilean judges do not have the technical backgrounds required to understand the technical content of a patent and, generally, are not very knowledgeable of patent law.

Answer ... The legal standard is that claim terms must be defined according to the information provided in the specifications, unless the term is so well known (by a person with ordinary skill in the art) that it does not need a definition.

Answer ... Primarily, the opinions of technical experts appointed by the court; but also documents, affidavits, live testimony and cross-examination of witnesses submitted by the parties.

Answer ... Yes, both preliminary and permanent injunctions.

Answer ... Preliminary injunctions require:

• the showing of a qualified and serious reason for the request;
• a determination of the value of the products; and
• a bond to guarantee against any damage sustained by the defendant.

The existence of the right (patent) and the necessity of the measure in order to secure a future result must also be shown.

Permanent injunctions are granted with the case decision.

Answer ... Yes, damages are available in civil proceedings.

Answer ... The types of damages available are:

• compensation for damages according to the general rules of civil liability (eg, direct damages, moral damages and lost profits); or
• one of the following alternatives for compensation set forth in Law 19.039:
• • lost profits suffered by the patent holder as a result of the infringement;
  • profits earned by the infringer as a result of the infringement; or
  • a licence fee, considering the commercial value of the infringed right and other licences previously granted by the patent holder.

Damages tend to include interest and readjustments. There are no punitive damages.

Answer ... Preliminary injunctions require:

• the showing of a qualified and serious reason for the request;
• a determination of the value of the products; and
• a bond to guarantee against any damage sustained by the defendant.

The existence of the right (patent) and the necessity of the measure in order to secure a future result must also be shown.

Permanent injunctions are granted with the case decision. However, the standard is high and the courts are generally reluctant to grant injunctions in patent infringement cases

Answer ... No, even if the infringement was wilful.

Answer ... Yes, in criminal proceedings.

Answer ... The application of a penalty – in particular, a fine, which may be doubled in case of recidivism. In addition, the judge may order the seizure and destruction of the infringing products, and materials and machinery used in their manufacture.

Answer ... Yes, where the losing party had no justifiable reason to litigate, as determined by the court.

Answer ... The court has sole authority to determine costs and attorneys’ fees, without having to follow specific standards in this regard. The parties can object to the court’s determination within three days; otherwise, this will be considered approved.

Answer ... All patent rights under Law 19.039 may be licensed to one or more parties, jointly or separately.

Answer ... The patent owner may impose limits in relation to the following:

• the territory to which the licence applies;
• the duration of the licence;
• how the licensed rights may be exercised; and
• sub-licensing.

There are no restrictions under Chilean patent law or general contract law on the limits that a patent owner may impose. However, the licence may not be extended beyond the expiration of the patent registration, as under general contract law the licence would be null and void for lack of cause.

Answer ... There are no limits under Chilean patent law, other than the fact that a compulsory licence may be requested and granted if the patent owner acts in a way that is contrary to free competition, in direct relation to the use or exploitation of the patent as declared by the Competition Tribunal. Nevertheless, there may be liability for unfair competition or antitrust for the abuse of IP rights where there is an attempt to enforce a patent under a very broad interpretation of the claims, or where the patent was granted as a result of inequitable conduct during prosecution.