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December 15, 2018 Vol. 73 No. 21 Back to Bulletin Main Page

CHILE: New Industrial Property Law Results in Interesting Changes for Designs

On October 2, 2018, a new bill was sent to the Congress to update the present Industrial Property Law in Chile. The bill modified some articles of the present law, including those regarding designs.

Presently, design protection in Chile is not attractive to businesses and consumers. Substantial examination is required and the registration procedure takes about one year—an overly long period that is not adapted to the dynamic character of the design industry and to the global trends in the major intellectual property (IP) offices around the world.

The bill introduces several changes, notably two parallel registration procedures for designs:
  1. The current general registration procedure: Applicants may still use this unmodified registration procedure, for which a novelty examination is required.
  2. Fast track (new art. 67 bis A): The applicant will need to explicitly request this procedure, which does not include novelty examination, only formal examination. If no formal objection is found, the Office will issue a certificate of deposit (certificado de depósito) and the design will be granted. Once it is granted, basic information about this deposit will be published in the Official State Gazette.
With the new law, the protection period of designs will be five years, which can be extended for two additional periods of five years, for a maximum of 15 years. Regarding designs granted before the entry into force of this law, if the period of validity was 10 years, and that time has not yet expired, the owners could request an extension of validity for up to an additional five years, and pay the official fees corresponding to a third five-year period.

Novelty examination can be requested at any time by the owner or a third person, at that person’s own expense, after the certificate of deposit is issued. The examination would then follow the general procedure. Art. 67 bis F. If the design is not novel, the certificate of deposit would be canceled by the Office. Art. 67 bis G.

If the design is considered novel, the Office will publish it for possible oppositions. In the absence of oppositions, the design will be granted provided that the registration fees are paid (otherwise the design application will be deemed abandoned).

This new registration procedure is a major change that will almost certainly result in an increase of applications. As the bill has recently entered the Congress, new elements could be introduced, including multiple design applications, additional formats for graphic representation, and classification of designs according to the Locarno Agreement. Moreover, the implementing regulation will be key to understanding the extent of the modifications introduced by this new bill. The timeline for future consideration of the bill is unknown.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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