IPRs in CHILE for EU SMEs Mercosur IPR SME Helpdesk

IPRs in CHILE for EU SMEs

Mercosur IPR SME Helpdesk

INDEX

o INVEST IN CHILEo Why o IPR Statisticso Innovation Statistics

o IP Responsible Institutions & International Treatieso Main IPRs in Chile

• Copyright• Patents and Utility Models• Industrial Designs• Trademarks• Geographical Indications and Appellations of Origin

o IPR Enforcement o Additional information

IPRs IN CHILE FOR EU SMEs

WHY INVEST IN CHILE

WHY INVEST IN CHILE

Billion EUR

Source

EU export in goods to Chile (€ billion, 2012)Primarily: machinery and electric equipment, transport equipment, chemical products, and fuel.

8.5 DG Trade

EU import in goods from Chile (€ billion, 2012)Primarily: mining products, fish, agricultural and wood products.

9.7 DG Trade

EU export in services to Chile in 2011: € 3.1 European Commission, DG Trade

EU import in services from Chile in 2011: (Source: European Commission, DG Trade) € 1.6 European Commission, DG Trade

Gross Domestic Product (€ billion, 2012) 197.6 World Bank

Annual growth rate (%, 2012) 5.6 % World Bank

http://eeas.europa.eu/delegations/chile/documents/press_corner/folleto_dg_trade.es.pdf





IP STATISTICSo IPR activity by residents and non-residents

— patent system is largely used by non-residents (about 90% of applications are done by non-residents).

— Trademarks - 32% of the applications were made by non-residents. o During 2012, the IP Office (INAPI) received

— 3,019 patent applications,— 53,000 trademark applications (19,347 renewals and 33,693 new

trademarks). o The technological areas with more patent applications in the last years are:

— Mechanical— Pharmacy— Chemistry

More information can be found at: http://www.inapi.cl/portal/institucional/600/w3-propertyvalue-1426.html

IP STATISTICS

Category Score Global RankRegional Rank

International Property Right Index 6.8 26 of 130 1 of 23

Physical Property Rights 7.1 25 of 130 1 of 23

Protection of Physical 7.4 34 of 130 2 of 23

Registering Property 8.5 61 of 130 5 of 23

Intellectual Property Rights 5.9 41 of 130 3 of 23

Potection of Intellectual Property Rights

8.6 21 of 130 14 of 23

Patent Protection 8.6 21 of 130 13 of 23

Copyright Protection 3.9 53 of 130 6 of 23

Información extraída desde reporte actividades INAPI 2014.

INNOVATION STATISTICS

INNOVATION STATISTICS

o According to the Global Innovation Index 2014, Chile ranked 46 out of 143 and 2 out of 22 at regional level (Latam+ Caribbean).

o One of the most successful innovation and entrepreneurial iniciatives is being performed through the state program CORFO that in 2015 will enter on its 5th edition. CORFO program aims to attract entrepreneurs and innovators to Chile and provide them with advice and funding in order to create a frienfly enviroment for innovators.

o Chile is currently the leader economy in the world in proportion of early-stage entrepreneurs that are innovative (according to Leveraging Entrepreneurial Ambition and Innovation Report).

o Santiago de Chile is ranked among the top 20 start-up ecosystems (Start Up Genome Report 2013).

IPRs IN CHILEFOR EU SMEs

IP RESPONSIBLE INSTITUTIONS & INTERNATIONAL TREATIES

IPR RECOGNIZED BY NATIONAL LAW – AND RESPONSIBLE INSTITUIONS

INAPIMINAGRI

SAGODEPA

MINSAL

ISP

MINEDUC

DIBAM DDI

Consejo de

la Cultura

PATENTS X

UTILITY MODELS X

INTEGRATED CIRCUIT DESIGN X

COPYRIGHT X X

PLANT VARIETIES X

TRADEMARKS X

APPELLATIONS OF ORIGIN X X

GEOGRAPHICAL INDICATIONS X X

INDUSTRIAL DESIGN X

TRADITIONAL KNOWLEDGE AND GENETICAL RESOURCES

X X X

Source www.inapi.cl

INTERNATIONAL TREATIES RATIFIED Berne Convention (Copyright) Paris Convention (Industrial Property) TRIPS Agreement (IP – WTO) PCT (Patents)o Madrid System (Trade Marks)o The Hague Agreement (Designs) UPOV (Plant Variety Rights) 1978 Convention on Biological Diversity

Since Chile has not ratified the Madrid System (Trade Marks) and The Hague Agreement (Designs), it is not possible to designate this country in a single International application for registrations of trademarks or designs, respectively.

STRENGTHS & WEAKNESSES OF THE IP SYSTEM

• Strengths:

- Chilean legislation assures reasonable strong standards of protection for IPRs.

- High effectiveness ratio of public innovation initiatives.

- High level of legal certainty.

- Strong innovative culture.

STRENGTHS & WEAKNESSES OF THE IP SYSTEM

• Weaknesses:

- Low innovation efficiency ratio

- Data protection problems in pharma and agrochemical marketing authorization

- Lack of proper measures to fight digital piracy


MAIN IPRS IN CHILE: COPYRIGHT

COPYRIGHT: WHAT YOU NEED TO KNOW

• What is it? Copyright is an IPR that protects the exclusive rights of authors of intellectual works.

• Who is the author? The author is the creator of the work (usually the person indicated in the work when it is disclosed, or the person indicated in the registration).

• Which kind of assets does it protect? Any literary, artistic or scientific work.


• Books, Musical compositions; Photographs, Cinematographic works • Paintings, drawings, Sculptures• Architectural projects, • Adaptations, translations and other transformations • Videograms• Textile designs or models.

• IMPORTANT!BE AWARE THAT Computer programs and its technical user manuals are

ALSO protectable by Copyright


What rights are granted to authors?

Copyright protection grants to the author both moral and economic rights.

• Economic Rights: are exclusive rights over the use and commercial exploitation of the intellectual work.

• Moral Rights: are exclusive personal rights of the author.

When Copyright protection is adquired by authors?• Copyright protection is legally acquired by the author by

the act of creation of the intellectual work.


How long does legal protection last?

o Copyright protection lasts for the author’s life plus 70 years after his/her death.

o For computer programmes, if the right holder is a legal entity, the term of protection shall last for 70 years after the first publication.


Shall I register copyright?

Copyright Registration is voluntary but advisable, especially to enforce the right.

Possible options:

• Unregistered Copyright

• Registered Copyright

COPYRIGHT: WHAT YOU NEED TO KNOW• Example

Unregistered Copyright: authors must recollect and furnish documents such as publications, including detailed information to prove authorship and ownership.Registered Copyright: the registration certifies the date of creation of the work, its content and confers authors a simple presumption of authorship by law.

If your copyright is already registered in a foreign country member of Berne Convention, you can ASSURE its PROTECTION in Chile including the following:

Mention: ‘All rights reserved or Reproduction forbidden’Letter c rounded by a circle (©), name of copyright holder and registration number.


• Who can register? A natural person (the author), or a legal person (work´s right holder e.g. work inventions). Foreign applicants should appoint a representative.

o Where to register?— Intellectual Rights Department (DDI)

— I.- On-line, on its website.— II.- In person, at one of the DDI offices — III.- By post

http://portalservicios.dibam.cl/DDI/IngresoObra


o Which documents do I need?— An Application Form duly fulfilled and — Documentation required

— Details can be found at DDI offices or website

o How much does it cost?— Engineering and architectural projects and computer

programmes: ca. 21 Euro — Cinematographic works: ca. 24 Euro — Any other registration: ca. 6 Euro

http://www.propiedadintelectual.cl/

COMPUTER PROGRAMS IN CHILE: WHAT YOU NEED TO KNOW?

o Copyright in a computer program created by employees as a part of their tasks is transferred to their employer, whether a natural or a legal person, unless otherwise stipulated.

o Copyright of a computer program developed under commission for a third party shall be deemed to be transferred to that third party, unless otherwise stipulated.


MAIN IPRS IN CHILE: PATENTS

PATENTS: WHAT YOU NEED TO KNOW

What are Patents? • They are exclusive rights granted by the State to protect

an invention, which is a technical solution to a technical problem.

Which kind of Patents can be protected? • Invention Patents• Utility Models• Lay-out designs of integrated circuits (sui generis)


Basic requirements for patenting:

• Invention Patents must be New, have Inventive Step and subject to Industrial applicability.

• Utility Models must be New and Industrially Applicable.

Inventiveness in case of Patents of Invention is more demanding than in case of Utility Models



o Patent of Inventions protection lasts 20 years from the filing date.

o Utility Models protection lasts 10 years from the filing date.


What is excluded from Patentability?

• In principle, immoral inventions and those whose

commercial exploitation is forbidden for reasons of public order, ethics, health and environment protection.


What is not considered Invention? • Subject matters are excluded from patentability if they lack

of technical purpose or concern plants, animals, essentially biological processes to produce plants or animals, parts of living beings, surgery and diagnostic methods applied to human body or animals.

Is there any exception? • Yes. Microorganisms that comply with patentability

requirements, microbiological proceedings, products destined to diagnostic methods, processes using biological material and the products obtaneid throught them.


Who can register? • Any natural or legal person can apply for the registration

of a Patent. Non-residents must appoint a representative in Chile.

Where to register? • Applications can be filed at National Institute of

Intellectual Property (INAPI) offices, personally, by post or electronically.


How much does it cost? • Application fee + publication fee + 10 years of

maintenance fee: ca. 287 Euros• Mandatory examination fee: ca. 591 Euros (Patents)

and ca. 475 Euros (Utility Models)• Maintenance fee: ca. 117 Euros for each five-year

period (Patents) and around 58 Euros for he first five years/ 117 euros the last five years (Utility Models)

These costs refer to official fees only. Representation fees (for lawyers or other representatives) and translation costs are not included.


Lay-out designs (topographies) of integrated circuits

o Chilean legislation also protects original three-dimensional arrangements of elements (expressed in any form and designed for manufacture) of Layout-designs or topography of integrated circuits.

o Protection is obtained through registration. Its term of duration, it is of 10 years from the date of its first commercial exploitation in any part of the world. Registration confers to right holders exclusive rights of use and exploitation.


MAIN IPRS IN CHILE: INDUSTRIAL DESIGNS

INDUSTRIAL DESIGNS: WHAT YOU NEED TO KNOW

What is it? • Industrial Design (three-dimensional) and Drawings

(bidimensional) protect the external appearance of an object.

How long does legal protection last?• Industrial Designs and Drawings protection last 10 years

from the filing date.


What can be protected by Industrial Design and Drawing?

• Any new three-dimensional form and any industrial or handcrafted product serving as a pattern for the manufacture of other products can be protected as Industrial Design.

• Any new two-dimensional form resulting from arrangements, collections or combinations of figures, lines or colors developed on a plan to be applied to an industrial product for decoration purposes can be protected as Industrial Drawing.


Who can register? • Any natural or legal person can apply for the registration

of Industrial Designs and Drawings. Non-residents must appoint a representative in Chile.

Where to register? • Applications can be filed with National Institute of


INDUSTRIAL DESIGN: WHAT YOU NEED TO KNOW

How Much does it cost? • Application+ publication fees of an Industrial Design

amount to ca.116 Euros.

• Examination fees (mandatory): around 396 Euros.

• Maintenance fees: around 58 Euros for the first five years/ 117 Euros for the last five years

These costs refer to official fees only. Representation fees (for lawyers or other representatives) and translation costs are not included.


MAIN IPRS IN CHILE: TRADEMARKS

TRADEMARKS: WHAT YOU NEED TO KNOW

What is it? • A trademark is a distinctive sign that can be represented

graphically and distinguish the origin of goods and services.


What can be protected as a Trademark?

• Signs may consist of words, including names of persons, letters or numbers

• Figurative elements pictures, graphs, symbols, combinations of colors sounds,

• Combined (word+figurative).• Sound trademarks


Basic requirements for registration: • Signs must have ‘distinctive character’. • Signs describing the good or service they cover are,

generally, excluded from trademark protection (unless they have acquired distinctive character through use).


Which signs may not be elegible for registration? • Signs that are confusingly similar to previously registered

signs,

• Signs that are confusingly similar to well-known trademarks

• Signs likely to mislead or deceive consumers as to the characteristics of goods and services,

• Descriptive marks

• Signs contrary to public order and morality,

• Scientific or technical names

• Flags, official emblems of any State or international organization unless prior authorization from the competent authority.



o Trademark protection lasts 10 years from the granting date. This may be indefinitely renewed for 10-year periods.


Who Can Register? • Any natural or legal person can apply for the registration

of a Trademark. Non-residents must appoint a representative in Chile.

Where to Register? • Applications can be filed with National Institute of



How much does it cost? • The cost to file a trademark registration is around 176

Euros for each class of goods or services plus 53 Euros of publication fees.

• 58 Euros shall be paid at the moment of filing the application. Otherwise, the registration will not be processed.


Multiple-class applications

• Multiple-class trademark applications and registrations are accepted. However, a product and a service cannot be requested together, but on separate application forms.

Tips and Wach-outs

The total amount of Trademarks in force in Chile is 333.760.

Of these, 40.050 are owned by EU companies, that is a 12%.



MAIN IPRS IN CHILE: GEOGRAPHICAL INDICATIONS (GI) & APPELLATION OF

ORIGIN (AO)

GI: WHAT YOU NEED TO KNOW

What is a Geographical Indication? • It is a sign used on goods that have a specific geographical

origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of origin. (Source WIPO)

What is an Appellation of Origin? • It is a special type of Geographical Indication generally

consisting of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. (Source WIPO)

http://www.wipo.int/geo_indications/en/

http://www.wipo.int/geo_indications/en/


What can be protected as Geographical Indication?

• Products whose quality, reputation or characteristics are relate to its geographical place of origin (such as a region or another locality in the country).

• In case of Appellations of Origin, other human or natural factors shall characterize the product.


How much does legal protection last?

o Geographical Indications protection lasts indefinitely, provided that the legal requirements are still met.


Who can register? • The GI or AO registration may be applied for by any

natural or legal person, provided that he/she represents a significant group of producers, manufacturers or artisans based on a determined area for the GI or AO.

Foreign GI and AO: • They can be registered in Chile, provided that they have

not fallen into disuse in their country of origin nor in Chile.


What documents and information are needed?

• Technical study from a relevant qualified expert• Map of the geographical production, extraction, processing,

growing or manufacturing area of the product • Project of Use and Control Regulations• Information about the acquired reputation of the product


Where to register? • Applications can be filed at National Institute of


How much does it cost? • Cost is about 175 Euros for each class of goods or

services. Of said amount, nearly 58 Euros shall be paid when filing the application. Otherwise, the registration will not be processed.


Tips and Watch-outs

• Wines and spirits included in the Association Agreement between Chile and the European Union do not need to be registered at INAPI since they all have automatic protection in Chile.

• On a case by case basis INAPI may authorise the coexistence between prior Chilean trademarks and GIs or AOs, or of these last two together.

http://www.direcon.gob.cl/detalle-de-acuerdos/?idacuerdo=6286

http://www.direcon.gob.cl/detalle-de-acuerdos/?idacuerdo=6286


IPR ENFORCEMENT

How to Enforce your IPR Rights:

• Civil Litigation • Criminal Prosecution • Preliminary injunctions• Border Measures

IPR ENFORCEMENT: WHAT YOU NEED TO KNOW

Tips and Watch-outs:

In order to be entitled to bring legal actions, it is essential to be able to publicly claim that the product or service is protected by industrial property rights using any of these indications:

• For trademarks, the letters ‘MR’ or ‘R’ within a circle ®.

• For patents, the letters ‘PI’ and the corresponding registration number;

• For industrial designs, DI’ and the registration number;

• For utility models, ‘MU’ and the registration number.

Failure to comply with this requirement shall prevent the right holder concerned from taking criminal action.


What is the competent authority for foreign trade control? • The National Customs Services.

What does it do? • Check if foreign goods do have the legal required

authorizations • Verify if foreign companies observe the import-export

rules. It plays a fundamental role of surveillance on counterfeiting as it checks if admitted goods do not infringe IPR and prosecutes infringements.


Counterfeited goods seized during 2010 (in US$) Clothing Toys Clocks Sunglasses Suitcases Shoes Gaming devices Writing utensils Textile Smartphones Chiropody utensils Caps and hats Spirits

Source: INAPI

http://www.inapi.cl/protegetuidea/estadisticas.html


ADDITIONAL INFORMATION

MAIN IP ORGANISATIONS AND SOURCES OF INFORMATION

NAME WEB ADDRESS

INAPI - Instituto Nacional de Propiedad Industrial

Departamento de Derechos Intelectuales

http://www.inapi.cl

http://www.propiedadintelectual.cl

INAPI Proyecta: A PORTAL FOR SMEs, by INAPI Chile

Customs Authority: NATIONAL CUSTOMS SERVICE:

http://www.inapi.cl/portal/institucional/600/w3-propertyvalue-907.html

www.aduanas.clINDUSTRIAL PROPERTY COURT IN CHILE:

European Unión, DG TRADE, Market Access Database:

www.tdpi.gob.cl/

http://madb.europa.eu/madb/barriers_crossTables.htm

Mercosur IPR SME Helpdesk: http://www.mercosur-iprhelpdesk.eu

http://www.inapi.cl/

http://www.inapi.cl/

http://www.propiedadintelectual.cl/



http://www.aduanas.cl/

http://www.tdpi.gob.cl/

http://madb.europa.eu/madb/barriers_crossTables.htm

http://www.mercosur-iprhelpdesk.eu/

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IPRs in CHILE for EU SMEs Mercosur IPR SME Helpdesk