Patents

What is a patent

Patents are the most generalized way to protect inventors’ rights.

A patent is an exclusive right granted by the state for the protection of an invention. The patent grants its holder the exclusive right to sell or relinquish their rights to another person to commercialize it under license, or to prevent third parties from commercially exploiting the protected invention, for a limited time period. In exchange the inventor has to make public his/her invention. The patent holder has the right to prevent others from manufacturing, utilizing, offering for sale, selling, or importing the patented invention without his/her permission, and can initiate legal proceedings against those who may infringe those rights.

Specifically, a patent consists of the right granted to a holder by the state, allowing the holder to prevent third parties from commercially exploiting the invention during a limited time period, generally 20 years from the filing date of the patent application, only applicable in the country where protection was sought (the territorial principle).

The system is based on the theory that the financial benefits arising from the exploitation of a patent, and the disclosure of the invention for the benefit of public dissemination and use, promote innovation and elevate the technological level of a country’s industries, with evident benefits for that country’s trade.

Indeed, by granting an exclusive right, a patent is an incentive that offers the inventor recognition for the creative activity and material reimbursement for the commercial invention. These incentives promote boost innovation, contributing to an increased quality of life. In return for these exclusive rights, the inventor is obliged to disclose the patented invention publicly, so that third parties may benefit from new knowledge and thus contribute to technological development.

Hence, disclosure of the invention constitutes an essential criterion in the patent-granting procedure. The patent system is designed within a balance between the interests of inventors and the interests of society.

It is not true that patents are solely granted for complex physical and chemical products and processes, or only to large companies. In general, patents can be obtained in any technological field, from paperclips to complex pharmaceutical products. There are thousands of patents for day-to-day products such as filters, glass bottles, fabrics, or bicycles.

Benefits of obtaining a patent

According to international agreements, patents can be obtained for any invention, process or product or a combination thereof, in any technological field (e.g. mechanical or electrical engineering, biotechnology, pharmaceutics, or chemistry). Both great advances and small improvements in technology are protected through patents. Thus, patentable developments in any given technological field can represent both disruptive and incremental innovation.

Patenting an invention is not an obligation, but an option, a strategy used to maintain a competitive advantage in the market. Patents grant exclusivity for exploiting an invention, allowing the rightholder to prevent third parties from using, manufacturing, selling, or importing the product or process. In return, the inventor must disclose the invention to the general public.

The information contained in patent documents is an effective tool for planning any kind of technological development process. Based on these documents, it can be determined the novelty of an invention and its possible patentability; and, at the same time, identifies what technology can be used freely.

These documents are the medium/mean by which the most recent technological innovations are disclosed. They cover every technical field, providing new, industry-applicable, and internationally relevant information, and are a very useful tool for evaluating the possibility of technology transfer for your current or future venture.

The patent documents of any country have a uniform structure, allowing simple extraction of required information. They are ordered according to a single classification system, the International Patent Classification (IPC), allowing patents to be classified according to their specific technical fields. This mechanism, which aids in information searching through IT systems, allows access and retrieval of patent documents in a relatively efficient and secure manner, compared to using other search parameters.

These documents generally provide the name and address of the applicant, rightholder, and the inventor. This information encompass a greater interest if considered from a commercial point of view; that is to say, if what is sought is to locate possible technological sources, to survey the competition in a specific market, to follow the activities of a certain company, or, perhaps most importantly, to obtain a license.

Requirements for obtaining a patent

There are three fundamental criteria for patentability. These are: the invention must be novel; there must be a level of inventiveness; and the invention must be industrially applicable.

Novelty: That is, that it does not already exist in the state of the art. The state of the art is everything that has been disclosed or made available to the general public, anywhere in the world, through a tangible publication, sale, or commercialization.

The novelty requirement comes from the importance of keeping the invention confidential before a patent application is filed. To secure this, contractual protection through non-disclosure agreements is essential, both with dependent employees and those responsible for research and development, as well as with possible investors or people who for one reason or another come into contact with the invention.

Have inventive step: That is, that a person having ordinary skill in the relevant art cannot claim the invention to be evident or obviously derived from the state of the art.

Have industrial applications: That is, that the invention can, in principle, be produced or used in any kind of industry, whether in manufacturing, handicrafts, mining, agriculture, or other.

The protection granted by the state is territorial, which means that it is only granted at a national level and only for r 20 years from the filing date of the application,.

National patent fees

What is the Patent Prosecution Highway (PPH)

a) In simple terms

The PPH is a procedure that allows accelerating the procedure of a patent application, based on a favorable report issued from a foreign office with which a cooperation agreement has been signed.

The basic concept of the PPH is that if at least one claim of the patent application has been considered patentable by a first industrial patent office (Office of Earlier Examination or OEE), a fast-track examination can be requested for the corresponding application, filed at a second industrial patent office (Office of Later Examination or OLE) with which a PPH agreement has been signed.

To take advantage of the PPH, the claims of the patent application filed in the Office of Later Examination (OLE) must correspond sufficiently with the claims considered patentable by the Office of Earlier Examination (OEE).

Notwithstanding the former, the decision as to whether or not to grant the patent is taken by the Office of Later Examination where the application has been filed. The favorable decision by the Office of Earlier Examination is a precedent to be taken into consideration, but ultimately non-binding.

b) Patent Prosecution Highway (PPH) modalities

The Chilean National Industrial Property Institute (INAPI) has strengthened its ties with the Industrial Property Offices of the region, signing agreements for the joint implementation of the pilot program of the Patent Prosecution Highway (PPH) in two modalities:

The PPH Mottainai modality allows an applicant who has obtained a favorable result at an Office of Earlier Examination (OEE) to request an accelerated examination of the application at an Office of Later Examination (OLE), regardless the office of origin or first deposit.

The PCT-PPH modality allows an applicant who has obtained a favorable result in the international stage in the framework of a PCT application, to request an accelerated examination of the application at an Office of Later Examination (OLE).

For the purposes of the PCT-PPH modality, the aspects of the international phase that constitutes the basis for evaluating an accelerated examination are the following:

The favorable written opinion of the International Searching Authority

The favorable written opinion of the International Preliminary Examination Authority

The favorable international preliminary patentability report.

c) Guidelines for participating in the PPH

Each country formulates, exchanges, and publishes its own guidelines that establish the requirements, documents, and procedures for an application to participate in the PPH in its respective office.

The guidelines are established by each country, in accordance to each country’s patent procedure; therefore, each of them have their own particularities that require the PPH applicant to study and deal with them when seeking to obtain a favorable official decision at an office that has signed a PPH cooperation agreement.

d) INAPI requirements, documents, and procedure

Filing a PPH application in Chile is completely free of charge.

The PPH at INAPI is only relevant to applications where the process can be effectively accelerated. Contested patent applications are excluded from participating in the PPH, as their nature impedes reaching the standards of celerity warranted by this process.

To obtain an accelerated procedure according to the PPH pilot program, the following five requirements must be met:

The application from the Office of Earlier Examination (OEE), on which the PPH application is based, and the application at INAPI as an Office of Later Examination (OLE), for which the accelerated examination is requested, are corresponding patent applications with the same date of priority or filing.

The corresponding application from the OEE has undergone substantial examination and has at least one patentable/granted claim.

The patent claims of application filed with INAPI correspond sufficiently to the claims found to be patentable by the OEE.

The patent application filed with INAPI has been published.

The examiner has not been appointed in the application filed with INAPI.

Additionally, Form 47 must be filled together with the following documents:

Copy or copies of the office action(s) of the OEE that determines the patentability of the application.

Copy of the claims considered patentable/granted by the OEE.

Table outlining the corresponding claims of the patent application filed with the OEE and the patent application filed with INAPI as OLE.

Copies of the documents cited as relevant by the OEE.

Form 47 can be downloaded at the following link

e) Effect of PPH application approval

Once the PPH application has been approved, the patent application from the OLE can benefit from an accelerated examination. During the procedure of a patent application there are legal and administrative deadlines, as well as deadlines for the separate parties involved. INAPI will prioritize applications that have received PPH approval, shortening the duration of the administrative part of the process. In practical terms, the PPH is a system for prioritizing the revision and examination of approved applications.

Once PPH approval has been obtained, the patent application moves to the examination stage, with preference over other patent applications in the same stage of processing. In this way, applicants who have received PPH approval can shorten the processing time of the patent application.

f) Practical recommendations for a PPH application

The requirements and conditions to request for a PPH are dependent on each country’s prepared guidelines, necessarily adjusted to their respective patent application procedure. The main recommendation is to follow the guidelines, as not every procedure is the same and there are certain differences between them.

The Patent Prosecution Highway (PPH) promotes collaborative work between patent offices and seeks to avoid duplicities. Thus, certain documents are not required to be included in the application under processing for which the PPH is sought. This may be because they have previously been included in the application, or because they are already available to OLEs through public databases.

Additionally, it is not necessary to file an official translation for documents in another language. Precise and consistent translations are sufficient.

g) PPH agreements signed by INAPI

The commitments endorsed by INAPI were made in the framework of multilateral or bilateral agreements with a total of nine countries, with guidelines for the different agreements being established.

h) PPH contact information: If you have any doubts or comments, please contact us via pph@inapi.cl.

PROSUR PPH

Agreement signed by Argentina, Brazil. Colombia, Ecuador, Paraguay, Peru, Uruguay, and Chile entered into force on the 16th of September 2016, and involves the Mottainai and PCT-PPH modalities.

The guideline published by INAPI for the PROSUR Industrial Property Offices can be downloaded from the following link:

PPH Agreement with the Canadian Intellectual Property Office (CIPO)

Entered into force on the 6th of January 2017, and involves the Mottainai and PCT-PPH modalities.

The guideline published by INAPI for the Canadian Intellectual Property Office (CIPO) can be downloaded from the following link:

Pacific Alliance PPH

Agreement signed by Colombia, Mexico, Peru, and Chile entered into force on the 1st of July 2016, and involves the Mottainai and PCT-PPH modalities.

The guideline published by INAPI for the Mexican Institute of Industrial Property (IMPI) can be downloaded from the following link

The guideline published by INAPI for the Superintendence of Industry and Commerce of Colombia (SIC) can be downloaded from the following link:

The guideline published by INAPI for the National Institute for the Defense of Free Competition and the Protection of Intellectual Property (INDECOPI) can be downloaded from the following link:

How do you search for and identify a patent?

Description

The state of the art, or prior art, comprises everything made available to the public anywhere in the world, through a tangible publication, sale or commercialization, use, or any other way, before the filing date of a patent application or the priority date

One example of a strategy to follow:

Classify the invention using the International Patent Classification (IPC), since that classifying technical data of inventions allows for a narrower and reasonably more reliable search.

Perform a combined search, using the International Patent Classification (IPC) and keywords.

Perform a search in a database containing “non-patent” literature.

Reasons to perform the patent state of the art search

Evaluating the scope of existent Intellectual Property rights: allows looking for patent infringement

Evaluating patentability requirements, in order to be reasonably certain that the invention fulfils patentability requirements.

Technological study: fundamental search for the planning of research or commercial activities.

Determining technological advances: an important search for being aware of new technology and recent advances.

International Patent Classification (IPC) classification codes

All patent documents are classified through specific codes that identify the technological group or groups that the invention described in the document pertains to. This kind of classification can complement and narrow down a search using only language and terminology, facilitating finding patent documents. Though there are several classification systems, the International Patent Classification (IPC) is recognized and used on a global scale, as it encompasses practically every imaginable technology field and is periodically updated in order to improve the system and take into account technological advances.

The IPC system is organized into hierarchical levels, corresponding to sections, classes, subclasses, and groups (main groups and subgroups), as shown in the following figure.For more information on the IPC, please consult the following link to the WIPO website.

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How to obtain a patent in other countries

The following options are available:

• a) File an application through the Patent Cooperation Treaty (PCT), a system for simplifying the processing of international patent applications. It should be noted that the PCT is not a system for granting patents, neither nationally nor internationally.
• b) File a patent application in a country member to the Paris Convention (one of the member states of the Paris Convention for the Protection of Industrial Property), and subsequently other patent applications in other Paris Convention members, within a 12-month period of time as from the filing date of the first application. In these subsequent countries, the applicant still enjoys the benefits from the date of filing of the first application (the so-called priority right).

Stages 1- Filing the patent application

Contents of the application:

Application form and technical sheet

The forms for the application sheet and technical sheet can be found on INAPI’s website. These should be filled out 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 to be solved. It may also contain a 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 or description

The specification refers to a document containing a detailed, clear, and complete description of the invention for which protection is sought.

In the case of patents and utility models, the specification should contain (Article 39, Regulations under Law No. 19,039):

• Description of prior art in the field.
• Description of included drawings, if any.
• Detailed description of the invention.
• Example of application of the invention, when if it so the case..

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.

Industrial drawings

• Introduction describing the industrial drawing.
• Description of the included drawing.

In the case of layout designs (topographies) of integrated circuits, the report should contain (Article 72, Regulations under Law No. 19,039):

Layout designs (topographies) of integrated circuits

• Introduction describing the layout design.
• Description of the accompanying prototype or model.

Set of claims

The set of claims refers to a document containing a collection of clear and concise descriptions, supported in the specification, 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 of Law No. 19,039).

Drawings

The term “drawings” encompasses sketches, flow charts, and graphs. These should be produced by means of technical drawings, 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).

Stages 2- Preliminary examination

After filing the patent application, utility model, industrial design, industrial drawing, or layout design (topography) of integrated circuits, INAPI conducts a preliminary examination that aims to verify that all the relevant documents have been filed, 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 observations

The applicant should answer these observations 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 observations

If there are no observations, or these have been opportunely overcomed, the application is accepted for processing. Afterwards, the applicant should request an extract of the application at INAPI and require 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 application. This online payment can be made any day of the week, including Saturday, Sunday, or holidays, through the website of the Official Gazette: Diaria Oficial

If you would rather pay for the publication in person, this can be done at the offices of the Official Gazette at 511 Dr. Torres Boonen St., Providencia, from Monday to Friday from 9am to 2pm and from 3pm to 5.30pm.

Stages 3- Publication of the application in 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, from the date when the application was deemed to have been abandoned. Otherwise, the application will be archived.

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 trademarks and patents section only on Fridays. Thus, we recommend that the publication be requested before the end of the 60-day time period.

• Opposition

Within the 45-day time period, from the publication of the application extract in the Official Gazette, any interested party may file an opposition to an application for a 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 a third party’s rights (Article 5, Law No. 19,039).

• Payment of expert’s fee

Within the 60-day time period, from the end of the period where opposition can be filed, 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 Banco Estado bank, Casa Matriz branch, payable to “Instituto Nacional de Propiedad Industrial - Peritos” (National Institute of Industrial Property - Experts).

If the applicant has not paid 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).

Stages 4- Appointment of the expert

After paying the expert’s fee, INAPI proceeds to appoint an expert, according to the technical field of the application.

The expert should accept the appointment within a timeframe of 20 working days, counting from the date that the expert was appointed (Article 81, Regulations under Law No. 19,039).

Once the expert has accepted the appointment, the expert should issue an expert’s examination report containing the technical analysis of the application, within a timeframe of 60 working days. The examination report shall contain a statement regarding the fulfillment or non-fulfillment of the patentability requirements (Article 7, Law No. 19,039).

Stages 5- Expert’s Examination report

The examination report consists of a written document containing the technical analysis of the application, with the aim of verify if the corresponding patentability requirements, established in articles 32, 56, 62, and 75 of Law No. 19,039, are fulfilled.

The expert should issue the examination report within a timeframe of 60 working days, counting from the date of acceptance of the appointment (Article 7, Law No. 19,039).

The examination report may or may not contain remarks on the application, of which the applicant will be notified.

• In the case where the examination 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.

Stages 6- Final decision

If the application fulfills the patentability requirements established under articles 32, 56, 62, and 75 of Law No. 19,039, the Director of INAPI issues a decision granting the industrial property right, following a formal background examination.

• Final acceptance

Once the formal examination is complete, the Director of INAPI issues a decision granting the patent, 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 decision, including a copy of the payment order stamped by the bank. With the payment confirmation, INAPI assigns a registration number to the property right.

If the payment and confirmation is not made in good time, 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 or entity 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 are limited in time.

• Duration

Applications filed on or before November 30, 2005:

The duration of validity of a patent in that situation is 15 years, from the granting date. In the case of utility models and industrial designs, the duration is 10 years, from the filing date. These periods are non-renewable.

The titles to these industrial property rights and, in the case of 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 duration of a patent is 20 years, from the granting date. In the case of utility models, industrial designs, industrial drawings, and layout designs (topographies) of integrated circuits, the duration is 10 years, counting from the date of the filing of the application.

These periods are non-renewable. The titles to these industrial property rights can be requested in person or online, in the online services section of this website.

Diagram of the procedure