Chile: Patent publications as Non-prejudicial disclosures

According to the Chilean Patent Office’s (INAPI) notice No. 001, issued on February 4, 2010, some patent publications will be taken into account as non-prejudicial disclosures in connection to the novelty patent filing requirement in Chile. This notice comes to rule out a former one that did consider them as prejudicial.

Article 42 of Chile’s Industrial Property Law Nº 19.039 states that information regarding an invention that was disclosed within 12 months before the patent filing application date should be considered non-prejudicial, provided that the same was disclosed by the owner of the application or with his/her authorization, as well as if the disclosure is a result of abuse and acts of unfair competition.

The new criterion is important for applications which have lost the 12 months Paris Convention priority and/or for PCT applications, which were filed internationally on a date prior to June 2, 2009 (PCT entered into force in Chile on this date).

In this sense, if a patent application was filed more than 12 months ago, or a PCT application was filed prior to 2 June 2009, but the invention was only first disclosed less than 12 months ago by its owner or someone authorized to do so, or as a consequence of abuse and acts of unfair competition undertaken by a third party, the owner of the invention is entitled to file an application in Chile and thus will benefit from the 12 month grace period stated in article 42 of Chile’s Industrial Property Law No. 19.039.

The grace period can only be claimed if the Patent Publication corresponds to the first disclosure of the invention.

Prepared by Rafael Pastor (Abogado de Baker & McKenzie – Cruzat, Ortuzar & MacKenna Ltda. –, Chile), posted by Gilberto.