What can be patented?
Anything completely new and unknown that also has industrial applications and solves a technical problem in an industry can be patented. This includes tools, mechanisms, processes, instruments, etc.
What cannot be patented?
Generally, anything that does not solve a technical problem in an industry cannot be patented, such as a scientific discovery, a theory, a business plan, and anything explicitly stated as non-patentable in the law (Law No. 19,039).
How can I obtain information about patents?
Given their relative complexity, especially in some technical areas, we recommend consulting specialists who possess the technical skills or knowledge to give comprehensive assistance in industrial property matters. These consultations are usually provided by the Technological Information Office of patent offices. At INAPI, we suggest addressing the Unidad de Orientación y Apoyo al Solicitante de Patentes (Patent Applicant Guidance and Support Unit) located at Avenida Libertador Bernardo O’Higgins 194, First Floor, Santiago, sending an e-mail to inapi@inapi.cl, or placing a call to 22 887 0554 or 22 887 0555, where professionals can give you specialized guidance in all patent-related matters.
What steps should be taken to obtain a patent?
The following three steps should be taken before filing a patent application with INAPI:
The first is describing, in technical terms, the invention in a comprehensible and reproducible way, highlighting its technical merits and distinguishing aspects. In virtue of said description and qualities, a state of the art search should be performed in order to verify if a product or process similar or identical to the one described has been previously divulged anywhere else in the world.
If the search does not uncover any similar previously existing patents, a patent application should be prepared comprising the relevant state of the art and the description of the invention.
What are the advantages of obtaining a patent?
The holder of a patent has exclusivity over the material protected by that patent. That is to say, for a limited time period, the State grants the patent holder the right to prevent third parties from using, manufacturing, or commercializing, without prior consent, material protected by the patent. Thus, it grants the right to initiate legal proceedings against anyone who uses, manufactures, or commercializes products that use, reproduce, or incorporate material protected by the patent.
Compliance with industrial property rights is guaranteed by courts of law.
How much does a patent cost?
A total of 4 UTM (Unidad Tributaria Mensual, or Monthly Tax Unit) must be paid for the first 10 years of patent rights, of which 1 UTM is paid when filing the application and the remaining 3 UTM are paid when the application is accepted. The remaining 4 UTM for the following 10 years of the patent validity are to be paid before the first 10 years are expired.
The expert’s fee must also be paid along with the first payment, the amount of which is periodically adjusted by decree of the National Director of INAPI. This amount is available for reference in the Document.
Is it advisable to disclose invention details to third parties, such as a possible investor, before filing a patent application?
One of the requirements for patentability is novelty, that is, that the invention should not be disclosed before it is presented to a patent office. Therefore, ideally, negotiation should be initiated after a patent application has been filed; however, this is not always possible. In these cases, it is recommended to enter into a notarized Non-Disclosure Agreement before disclosing invention details.
Can patent applications be filed in person?
Any application for registering an industrial property right can be filed in person by the holder or the holder’s agent.
What documentation is needed to file a patent application?
Depending on the type of right, one or two forms (technical sheet and application sheet) should be included in the application, which can be downloaded free of charge from the website or bought from INAPI. A description, claims sheet (depending on the type of right applied for), and drawings must also be included in the application.
What is the INAPI electronic payment process?
To make electronic payments, the requested information must first be entered into the electronic form and the button marked “pay” selected. A “Payment Confirmation” screen will be shown, where the user can review the information provided. If this is correct, the user should again click the “Pay” button, whereupon the system will redirect the user to the website of the National Treasury. On this website, you may select a bank where you hold an account in order to complete the payment. If your bank is not available, please choose the “webpay” option in order to use a credit card to complete the payment.
How do I use the commercial trademark registration guidelines?
These guidelines seek to publish and standardize the criteria and internal practices that the Patent Sub-directorate uses in the examination and processing of invention patents, utility models, and industrial designs, describing the general guidelines that should be taken into account by both applicants and INAPI in order to comply with the relevant laws and regulations.
What is a licence?
A licence is the most common form of technology transfer contract. It allows a third party to exploit the patented invention under certain conditions, in exchange for a periodic payment. The payment amount is usually relative to the benefit obtained by the use of the invention by the third party (royalties). The holder still retains possession of the patent, which implies maintaining obligations such as the payment of patent fees, when applicable.
Does a licence involve relinquishing the right of exclusivity to a licence holder?
No. Using a licensing contract, the holder of a patent may transmit, in whole or in part, to a greater or lesser extent, his or her exclusive right over the object for which the patent is held to one or more interested parties, in exchange for monetary reimbursement. This reimbursement varies depending on several factors, such as whether the patent is being processed or is already granted, or, in the latter case, if it is a “strong” or a “weak” patent. By entering into a licensing contract, the licensor and licensee undertake a collaborative partnership that lasts throughout the licensing period.
What is technology transfer?
Technology transfer is basically the transfer or handing over of technology or technological information from its owner to a third party. Intellectual assets such as patents can be transferred in a technology transfer, whether they are pending or have already been granted.
This process can involve either patent licensing (similar to a rental agreement) or patent assignment (similar to a sale), as well as supplemental commercial activities to the commercialization of the product or process described in the patent.
In this sense, technology transfer is an alternative way to profit from investments made in the design and development of a patentable invention when it is not possible or profitable to carry out, with reasonable assurance, its complete or partial manufacture and subsequent commercial distribution, or its implementation in the manufacturing process.
What avenues are available for the commercialization of my patent?
The avenues for commercialization of a patent include the total or partial assignment of rights and contractual licences. On the other hand, both the patent application and, obviously, the granted patent are transferable by any avenue specified by the right. In particular, they can be licensed.
What does public domain patent transfer entail?
Ideas and innovations that no one holds property rights to are free to be used by anyone. It is not necessary to obtain a holder’s permission to use a patented invention once the patent expires or is abandoned in the country where the patent was granted or when the user is in a country distinct from where the patent was granted or where that patent does not have legal standing.
How is it used?
Technologies that are part of the public domain can be transferred through publications and technical documents or through products using the technologies in question. For example, it is possible to transfer technology by studying and examining technologies used in an acquired product (a process known as reverse engineering). However, in order for this type of transfer to take place, the acquiring body must have the capability to examine, understand, and imitate the technology integrated into the product. Normally, a learning process takes place, during which the capacity for technology absorption is increased by probing and successive approximations.
Aspects to consider: If the exploitation of the patented invention infringes on the rights of another valid patent that has a wider scope than the technology that is part of the invention in question, authorization from the patent holder is required in order to exploit the invention that is no longer under patent protection.
How do I register a design?
Filing the application:
Application sheet: Obtain the application forms sold at the register located in the INAPI offices.
Fill out both forms by typewriter or computer with the personal information of the applicant, inventor, and agent, if any. Additionally, the type of application should be noted, along with the priority date, if applicable, and a title that allows for a clear and precise idea of what protection is being sought for.
The technical sheet should also contain a representative summary of the invention, its field of application, and the technical problem it seeks to solve. It may also contain a representative figure. The length of the summary shall not exceed 1,600 characters (Article 38, Regulations under Law No. 19,039).
If the applicant has designated an agent, a power of attorney should be included in the application (Article 15 of Law No. 19,039). Additionally, if the applicant is not the same person as the inventor, an assignment of rights shall be included (Articles 11 and 12, Regulations under Law No. 19,039).
Specification: The specification refers to a document containing a detailed, clear, and complete description of the invention for which protection is being sought.
In the case of industrial designs and drawings, it should contain (Article 54, Regulations under Law No. 19,039):
a) Industrial designs:
Introduction describing the industrial purpose and the preferred application.
Description of the included drawings.
Detailed description of the geometric characteristics of the design, with a reference to the relative proportions or dimensions, without an expression of specific units, for each of the elements that configure the design, in such a way that it is possible to reconstruct the image of the object by merely reading this description.
b) Industrial drawings
Introduction describing the industrial drawing, description of the included drawing.
Claims sheet: The claims sheet refers to a document containing a collection of clear and concise descriptions, underpinned by the specifications report, whose aim is to list the novel aspects for which protection is sought. They shall be preceded by an Arabic numeral and shall be as many as necessary to define and delimit the invention properly (Articles 41 - 44, Regulations under Law No. 19,039).
Drawings: The term “drawings” encompasses sketches, flow charts, and graphs. These should be produced by means of technical tracing, and may not be marked or delimited by lines or include any kind of label or descriptive text, which should be replaced instead by numerical references, duly referenced in the description (Articles 46 - 48, Regulations under Law No. 19,039). In the case of drawings of the industrial design, these shall contain at least a view of the upper level, an elevation view, a profile view, and a perspective view. Other views may be required, depending on the complexity of the design.
In the case of industrial drawings, a representation in one plane of the reproduction of the drawing is sufficient. Additionally, in these types of rights, all of the figures in the drawings should be numbered and submitted with a photostatic duplicate (Article 55, Regulations under Law No. 19,039).
All information should be filed in DUPLICATE (Articles 5, 11, and 12, Regulations under Law No. 19,039).
Preliminary examination
After filing the application, INAPI conducts a preliminary examination that aims to verify that all the relevant documents have been included, according to the type of application, and that this application complies with minimum formal requirements in order to continue the processing of the application.
In the preliminary examination, it may be the case that:
There are remarks
The applicant should answer these remarks within a time period of 60 working days, making the necessary corrections, clarifications, or including the pertinent documents, as the case may be. If the applicant does not reply within the established timeframe, the application is deemed not to have been filed (Article 45, Law No. 19,039).
There are no remarks
If there are no remarks, or these have been opportunely addressed, the application is accepted for processing. Afterwards, the applicant should withdraw an extract of the application from INAPI and request its publication to the Official Gazette within a time period of 60 working days, counted from the date when the application was accepted for processing (Article 14, Regulations under Law No. 19,039).
This extract contains a CVE number, which is used to pay for the online publication of the patent. This online payment can be made any day of the week, including Saturday, Sunday, or holidays, through the website of the Official Gazette.
If you would rather pay for the publication in person, this can be done at the offices of the Official Gazette at Dr. Torres Boonen 511, Providencia, from Monday to Friday from 9am to 2pm and from 3pm to 5.30pm.
Publishing the application in the Official Gazette
The applicant should retrieve an extract of the application from INAPI and request publication in the Official Gazette within a time period of 60 working days, counting from the date when the application was accepted for processing (Article 4, Law No. 19,039).
To this effect, the applicant should request publication of his or her application within the timeframe given in the offices of the Official Gazette.
If the application is not published within 60 days, said application shall be deemed to have been abandoned. To resume processing, the applicant should apply for reinstatement of the application and publish the application within a timeframe of 120 working days, counted from the date when the application was deemed to have been abandoned. Otherwise, the application will be archived in a private archive for good.
All details surrounding an application will become public from the date when it is published in the Official Gazette.
The Official Gazette publishes extracts of industrial property rights applications in its commercial brands and patents special supplement only on Fridays. For this reason, we recommend that the publication be requested well before the end of the 60-day time period. Please note that the Official Gazette applies a 100% surcharge to publications requested one day prior to the publication of the supplement.
Opposition:
Within the 45-day time period, counting from the publication of the application extract in the Official Gazette, any interested party may formulate an opposition to an application for an invention patent, utility model, industrial design, industrial drawing, or layout design (topography) of integrated circuits, based on the fact that the application does not fulfil one or several of the patentability requirements or infringes on that party’s rights (Article 5, Law No. 19,039).
Payment of expert’s fee:
Within the 60-day time period, counting from the end of the period where opposition can be formulated, and whether an opposition has been filed or not, the applicant should pay the full amount of the expert’s fee and provide proof of that payment to INAPI (Article 8, Law No. 19,039).
The payment of the expert’s fee must be made to account number 900122-1 at the BancoEstado bank, Casa Matriz branch, payable to “Instituto Nacional de Propiedad Industrial - Peritos” (National Institute of Industrial Property - Experts).
If the applicant has not paid INAPI the expert’s fee within the 60-day time period, the application shall be deemed to have been abandoned. To resume processing, the applicant should make the payment and apply for reinstatement of the application within a timeframe of 120 working days, counting from the date when the application was deemed abandoned. Otherwise, the application will be archived for good (Article 8, Law No. 19,039).
Appointment of the expert
After paying the expert’s fee, INAPI proceeds to appoint an expert, according to the technical area of the application.
The expert should accept the appointment within a timeframe of 20 working days, counting from the date that he or she was appointed (Article 81, Regulations under Law No. 19,039).
Once he or she has accepted the appointment, the expert should issue an expert’s report containing the technical analysis of the application, within a timeframe of 60 working days. The report shall contain a statement regarding the fulfillment or non-fulfillment of the patentability requirements (Article 7, Law No. 19,039).
Expert’s report
The expert’s report consists of a written document containing the technical analysis of the application, with the aim of verifying if the corresponding patentability requirements, established in articles 32, 56, 62, and 75 of Law No. 19,039, are fulfilled.
The expert should issue his or her report within a timeframe of 60 working days, counting from the date he or she accepted the appointment (Article 7, Law No. 19,039).
The expert’s report may or may not contain remarks on the application, of which the applicant will be notified.
In the case where the expert’s report contains observations,
The applicant has 60 working days to answer the expert’s observations. In the case where the expert’s report does not contain observations,
The application proceeds to the formal review stage and is deemed to have been accepted.
Final decision
If the application fulfills the patentability requirements established in articles 32, 56, 62, and 75 of Law No. 19,039, the National Director of INAPI issues a decision granting the industrial property right, pending a formal background examination.
Final acceptance
Once the formal examination is complete, the National Director of INAPI issues a decision granting the patent for the invention, utility model, industrial design, industrial drawing, or layout design (topography) of integrated circuits.
Payment of fees and payment confirmation:
Once the application has been accepted, the applicant must request a payment order at INAPI for the administrative fees related to obtaining the patent, payable at any commercial bank. The applicant must then provide INAPI with confirmation of this payment within a time period of 60 working days, starting from the date the applicant was notified of the final acceptance, including a copy of the payment order stamped by the bank. With the payment confirmation, INAPI assigns a registration number to the property right.
Should the payment and confirmation not be made in a timely manner, the application shall be deemed to have been abandoned.
Title: INAPI then proceeds to create the registration and issues, on behalf of the interested party, the title that grants a specific person the respective industrial property right, provided the proper payment has been made.
Industrial property rights have a territorial scope, which means they are only valid throughout Chilean territory. Additionally, they have a limited period of validity.
Period of validity:
Applications filed on or before November 30, 2005: In the case of industrial designs, the period of validity is 10 years, counting from the date of the filing of the application with INAPI. These periods are non-renewable. The titles to these industrial rights and, in the case of invention patents, their certificates, can be requested in person at INAPI or online, in the Online Services section of this website.
Applications filed on or after December 1, 2005: The period of validity of industrial designs, industrial drawings, or layout designs (topographies) of integrated circuits is 10 years, counting from the date of the filing of the application.
These periods are non-renewable. The titles to these industrial rights can be requested in person or online, in the Online Services section of this website.
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