Décret n° 82 portant approbation du règlement d'application de la loi n° 19.039 sur la propriété industrielle, Chili

REGULATIONS UNDER LAW N° 19.039 ON INDUSTRIAL PROPERTY

 

TITLE I

GENERAL PROVISIONS

 

Article 1.- The granting and protection of industrial property rights related to trademarks, patents, utility models, industrial designs, layout designs or topographies of integrated circuits, geographical indications, and appellations of origin shall be governed by these Regulations.

Article 2.- For the purposes of these Regulations, the following definitions shall apply:

−         International Patent Classification: The International Patent Classification established by the Strasbourg Agreement of March 24, 1971, and its subsequent amendments.

−         Trademark Classification: The International Classification of Goods and Services established by the Nice Agreement of June 15, 1957, and its subsequent amendments.

−         Utility Model Classification: The International Patent Classification established by the Strasbourg Agreement of March 24, 1971, and its subsequent amendments.

−         Industrial Design Classification: The International Classification for Industrial Designs established by the Locarno Agreement of October 8, 1968, and its subsequent amendments.

−         Technical Equivalent: An element or means that performs the same function as the one claimed in an invention, in the same manner and producing the same effect or result as specified in the claim.

−         State of the Art: All knowledge that has been made available to the public anywhere in the world, even if entirely unknown in Chile, through publication in tangible form, sale or commercialization, use, or any other means, prior to the filing date of an application or the priority claim of an industrial property right in Chile.

−         Institute: The National Institute of Industrial Property (INAPI[1]).

−         Law: Law No. 19,039, or the "Industrial Property Law," and its subsequent amendments.

−         Non-voluntary License: A license granted by the competent authority to a third party to use an invention without or against the will of its holder, based on one of the grounds established in Article 51 of the Law.

−         Specification of the Invention: A document through which the applicant discloses in a clear and detailed manner their invention, utility model, industrial design, layout design or topography of integrated circuits, as well as the state of the art related to the industrial property right.

−         Expert: A professional, specialist, or qualified individual whose expertise enables them to issue technical reports.

−         Set of Claims: Document containing a set of clear and concise descriptions, formally structured, supported by the specification of the invention, aimed at identifying the novel aspects for which protection is requested.

−         Right of Priority: The preferential right to file an application after it has been previously filed in Chile or abroad. The priority claim is the right that ensures that a pending application abroad may also be filed in Chile within the time frame established by law or an international treaty ratified by Chile.

−         Royalty: Compensation, remuneration, or periodic payment that the licensee must pay to the holder of an industrial property right for the granted license to use such right.

−         Claim or Clause: The statement and delimitation of what is ultimately protected by a patent or utility model, which has the following structure:

−         Number

−         Preamble

−         The expression "characterized by," and

−         The characterization.

−         Independent Claim: A claim that designates the subject matter of the invention and its main characteristics. The specification may contain more than one independent claim of the same or different category, maintaining the unity of invention[2], if the subject matter of the application cannot be adequately covered by a single independent claim.

−         Dependent Claim: A claim that contains the features of another claim and specifies additional details or alternatives for which it is requested.

−         Multiple Dependent Claim: A claim that refers to more than one previously numbered claim within the same specification.

−         Cooperative Patent Classification System: A bilateral system developed jointly by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO), which incorporates the best classification practices from both offices.

−         Application: A form submitted in accordance with the technical requirements established through the platforms provided by the Institute, containing basic information about the applicant and the request being made. In cases where the Law, these Regulations, or other applicable provisions require the submission of additional documents, such documents shall be considered an integral part of the application.

−         Title: A document issued by the Institute in accordance with the rules of these Regulations, certifying the granting of an industrial property right.

TITLE II

APPLICATIONS AND SUPPORTING DOCUMENTS

Article 3.- All applications shall be submitted to the Institute using the platforms provided by it, except in cases of legal exceptions. Once the application is submitted, it will be assigned a filing date and time, as well as a serial number, which will be used to identify it during processing.

 

Article 4.- All applications must be accompanied by the supporting documents required by the Law and these Regulations in each case, as well as those required by other applicable regulations for the submission of applications to administrative authorities.

All documentation must be submitted in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

 

Article 5.- Once the application is submitted, the Institute will confirm this by providing the applicant with a receipt, indicating the corresponding date, time, and serial number.

 

Article 6.- An application for the registration of a trademark must include the following information:

a)       The full name or corporate name; tax identification number (RUT[3]), if applicable; email address, and address of the applicant; and the same information for the applicant's agent or authorized representative, if any. The applicant may also choose to include their national identity number and that of their agent or authorized representative;

b)      A clear specification of the trademark. The trademark must be presented in any form considered appropriate using generally available technology, provided it can be represented or reproduced in the register clearly, precisely, completely, accessibly, intelligibly, durable, and objective, in a way that allows the Institute to determine the exact scope of the protection being requested;

c)       A specification of the goods and/or services that will bear the trademark, and the class or classes of the Trademark Classification for which protection is requested;

d)      A translation of the trademark. If the requested sign incorporates one or more expressions in a language other than Spanish, these must be translated into Spanish when describing the trademark; and

e)      The signature of the applicant, or of the agent or authorized representative, if any.

 

Article 7.- An application for the registration of a trademark must be accompanied by the following supporting documents:

a)       In the case of figurative or combined[4] trademarks, the trademark must be submitted in one of the formats accepted by the Institute.

b)      For the registration of a personal name, supporting documents must be submitted to prove that the name belongs to the applicant or to show consent as referred to in letter c) of Article 20 of the Law. If the registration of a fictitious name is requested, which does not correspond to any natural person or legal entity, an affidavit must be submitted to that effect.

c)       A Power of Attorney granted in accordance with Article 15 of the Law, or the indication of its custody number with the Institute, if a representative has been appointed for the purpose of processing the industrial property rights registration.

d)      When the applicant is a legal entity, documents proving the authority of its representative, if different from the one indicated in the previous paragraph.

e)      In the case of non-traditional trademarks, meaning those consisting of signs not traditionally capable of graphic representation, any information that clearly specifies the applied trademark, in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

f)        Proof of payment of the fees.

Documents must be submitted in Spanish or properly translated.

 

Article 8.- In the case of applications for collective or certification trademarks, their rules of use must also be submitted, which shall include the provisions set forth in Article 23 bis C of the Law, as well as the following:

a)       The characteristics, qualities, or methods of production common to the goods or services in the case of collective trademarks, and the quality, components, origin, or any other characteristic of the relevant goods or services to be accredited, certified, or guaranteed through the certification trademark;

b)      Membership requirements for users of the collective trademark;

c)       A description of the control methods for the trademark;

d)      The rights and obligations of the authorized users of the trademark;

e)      Sanctions for non-compliance with their rules of use; and

f)        The process for amending their rules of use.

 

Article 9.- An application for the registration of a patent or utility model must include the following information:

a)       The full name or corporate name; tax identification number (RUT[5]), if applicable; email address, and address of the applicant; and the same information for the applicant's agent or authorized representative, if any. The applicant may also choose to include their national identity number and that of their agent or authorized representative;

b)      The full name, nationality, and address of the inventor;

c)       The title of the invention;

d)      The number, place, and date of the first application filed abroad, if any;

e)      A formal declaration of novelty, ownership, and utility of the invention, pursuant to Article 44 of the Law;

f)        The signature of the applicant, or of the agent or authorized representative, if any.

g)       A declaration, if applicable, of the divisional nature of the application, citing the number of the original application that is still pending resolution by the Institute; and

h)      A declaration, if applicable, regarding any disclosures referred to in Article 42 of the Law.

In addition, the following supporting documents must be submitted in the manner determined by the Institute:

a)       If the applicant is not the inventor, the document evidencing the transfer or assignment of rights must be submitted;

b)      The documents referred to in Articles 43 and 58 of the Law, depending on whether the application pertains to a patent or a utility model, respectively;

c)       A Power of Attorney granted in accordance with Article 15 of the Law, or the indication of its custody number with the Institute, if a representative has been appointed for the purpose of processing the industrial property rights registration;

d)      When the applicant is a legal entity, documents proving the authority of its representative, if different from the one indicated in the previous paragraph;

e)       Proof of payment of the fees.

Documents must be submitted in Spanish or properly translated.

 

Article 10.- In the case of provisional patent applications, the requirements set forth in Article 40 of the Law shall apply, and the submission of claims and the declarations referred to in Article 44 of the Law shall not be required.

 

Article 11.- An application for the registration of industrial designs and drawings, layout designs or topographies of integrated circuits must include the following information:

a)       The full name or corporate name; tax identification number (RUT[6]), if applicable; email address, and address of the applicant; and the same information for the applicant's agent or authorized representative, if any. The applicant may also choose to include their national identity number and that of their agent or authorized representative;

b)      The full name, nationality, and address of the creator;

c)       The title;

d)      A formal declaration of novelty, ownership, and utility of the invention, pursuant to Article 44 of the Law;

e)      The signature of the applicant, or of the agent or authorized representative, if any;

f)        A declaration, if applicable, of the divisional nature of the application, citing the number of the original application that is still pending resolution by the Institute; and

g)       A declaration, if applicable, regarding any disclosures referred to in Article 42 of the Law.

In addition, the following supporting documents must be submitted in the manner determined by the Institute:

a)       If the applicant is different from the creator, the document evidencing the transfer or assignment of rights must be submitted;

b)      The documents referred to in Articles 64 and 80 of the Law, depending on whether the application pertains to an industrial design or drawing or a layout design or topography of integrated circuits, respectively;

c)       A Power of Attorney granted in accordance with Article 15 of the Law, or the indication of its custody number with the Institute, if a representative has been appointed for the purpose of processing the industrial property rights registration;

d)      When the applicant is a legal entity, documents proving the authority of its representative, if different from the one indicated in the previous paragraph;

e)      Proof of payment of the fees.

Documents must be submitted in Spanish or properly translated.

 

Article 12.- An application for the registration of a geographical indication or appellation of origin must include the following information:

a)       The full name or corporate name; tax identification number (RUT[7]), if applicable; email address, and address of the applicant; and the same information for the applicant's agent or authorized representative, if any. The applicant may also choose to include their national identity number and that of their agent or authorized representative;

b)      A statement declaring that the applicant is entitled to apply for the geographical indication or appellation of origin, in accordance with Article 94 of the Law;

c)       The geographical indication or appellation of origin;

d)      The country of origin of the geographical indication or appellation of origin;

e)      The geographical area of production, extraction, transformation, or manufacture of the product to be distinguished by the geographical indication or appellation of origin, defined by its geographic characteristics according to the political-administrative division of the country;

f)        A detailed description of the product or products to be distinguished by the requested geographical indication or appellation of origin, including their essential characteristics or qualities; and

g)       The signature of the applicant, or of the agent or authorized representative, if any.

In addition, the following supporting documents must be submitted in the manner determined by the Institute:

a)       A technical study, prepared by a qualified professional, demonstrating that the characteristics or qualities attributed to the product are primarily or exclusively due to its geographical origin;

b)      A draft regulation for the specific use and control of the requested geographical indication or appellation of origin;

c)       A map showing the delimitations of the specific geographical area corresponding to the geographical indication or appellation of origin for which requested protection is being sought, in accordance with the geographical characteristics and political-administrative division;

d)      Documentation proving that the applicant is entitled to apply for the geographical indication or appellation of origin, in accordance with Article 94 of the Law;

e)      In the case of a foreign geographical indication or appellation of origin, documents justifying its existence and origin, unless previously recognized by international treaties ratified by Chile.

f)        A Power of Attorney granted in accordance with Article 15 of the Law, or the indication of its custody number with the Institute, if a representative has been appointed for the purpose of processing the industrial property rights registration;

g)       When the applicant is a legal entity, documents proving the authority of its representative, if different from the one indicated in the previous paragraph;

h)      Proof of payment of the fees.

Documents must be submitted in Spanish or properly translated.

 

Article 13.- The publication referred to in Article 4 of the Law must be requested from the Official Gazette by the applicant, under their responsibility, within 20 days following the acceptance for processing of the application in the case of trademarks, and within 60 days for patents, utility models, industrial designs and drawings, layout designs or topographies of integrated circuits, geographical indications, and appellations of origin.

The publications must include, at a minimum, the following information, as applicable:

a)       For trademarks, the application number, the full name or corporate name of the applicant, an appropriate representation of the trademark being applied for, and its label, if applicable, along with a specification of the requested scope of protection;

b)      For patents, utility models, industrial designs and drawings, layout designs, or topographies of integrated circuits, the application number, the full name or corporate name of the applicant, and a brief explanatory extract of the subject matter of the right for which protection is requested;

c)       For geographical indications or appellations of origin, the application number, the full name or corporate name of the applicant, the designation of the geographical indication or appellation of origin, a description of the product(s) to be distinguished by, and the corresponding geographical area.

The application for a trademark, geographical indication, or appellation of origin, whose extract is not published within the term specified in this article, shall be deemed not to have been filed. In the same circumstances, with regard to patents, utility models, industrial designs and drawings, layout designs, or topographies of integrated circuits, the application shall be deemed abandoned and will be archived.

Errors in the publication that are not substantial may be corrected by a resolution issued ex officio or at the request of a party.

In the case of substantial publication errors, a new publication must be made within 10 days from the date of the resolution ordering such publication.

Color differences or minor shape distortions that may occur normally during the publication process shall not affect the validity of the publication.

 

TITLE III

GENERAL REGISTRATION PROCEDURE

 

Article 14.- All applications for industrial property rights shall be submitted in Spanish.

The Institute shall create a file containing the submissions, documents, actions, and background information related to the granting procedure, including any appeal stages, if applicable, and which will be closed with the final decision of the Institute.

 

Article 15.- Applications may be submitted on behalf of one or more persons. In the latter case, a common representative or agent shall be appointed.

Any joint ownership of rights arising from the application shall be governed by common law. However, if there is an agreement of indivision or any other arrangement regarding the shared rights, it may be submitted at any time and shall be attached to the file or recorded in the margin of the respective registration, if the right has already been granted.

 

Article 16.- A preliminary examination shall be carried out by the Institute, which must verify that the submission complies with the provisions of Articles 14, 15, 40, 43, 58, 64, and 80 of the Law and Articles 9, 11, and 51 of these Regulations, as applicable.

A report of the preliminary examination will be issued, stating the type of application (patent, utility model, industrial design or drawing, or layout design or topography of integrated circuits), a preliminary technical classification, and any pertinent observations regarding the submission. Additionally, the Institute's experts will prepare the abstract for publication, which, in their judgment, best represents the subject matter of the application.

In the preliminary examination, the most representative drawing(s) of the invention, utility model, industrial design or drawing, layout design, or topography of integrated circuits shall be specified, so that an image of these may be included in the publication referred to in Article 13 of these Regulations. For this purpose, the respective resolution shall specify in detail which drawing(s) will be published.

 

Article 17.- Once the resolution accepting the application for registration has become final, and the payment of the corresponding fees has been accredited, or the benefit established in Article 18 bis A of the Law has been granted, the Register shall be created and the respective title may be issued. This title shall be signed by the National Director of the Institute and by the relevant Registrar, depending on the type of right in question.

 

Article 18.- In the event that two or more industrial property applications conflict with each other, priority shall be given to the application that was filed first with the Institute, without prejudice to the determination of the rightful creator, which may be established through due process before the National Director of the Institute.

 

Article 19.- When an applicant wishes to benefit from the payment deferral of the fees as established in Article 18 bis A of the Law, they must request it in writing along with the respective application, submitting a sworn statement of financial incapacity and any other necessary supporting documents to prove this circumstance at the time of filing, such as a social report, the social protection record, or any instrument that replaces it, and proof of income.

The applicant who already has another application benefiting from this deferral may not request this benefit again until the previous payment has been completed.

If the applicant fails to prove their financial incapacity, the Institute will issue a decision requiring payment of the corresponding fees within 30 days.

The fees and charges that have been deferred pursuant to this Article must be paid within two years following the acceptance of the application for registration. A two-year extension may be requested before the expiration of this period. The Institute will declare the revocation of the right if the payment is not made within the previously established deadlines.

If the benefit established in Article 18 bis A of the Law is granted and the application is deemed rejected, definitively abandoned, or withdrawn, the Institute shall, in the same resolution, order the payment of all deferred fees within 30 days, providing justification for such decision.

 

Article 20.- The procedure for the refund of the amount paid as an appeal fee, as provided in Article 18 bis C of the Law, shall commence with the issuance of a certificate by the Industrial Property Court[8] and will be conducted in accordance with the technical standards of their available technological systems.

 

Article 21.- The resolution authorizing the registration of any industrial property right[9] shall be notified electronically, without prejudice to its inclusion in the official list of notifications[10] prepared by the Institute.

The Institute shall prepare and publish the official list of notifications referred to in Article 13 of the Law. This list will be prepared daily and will include the resolutions that are notified, identifying at least their corresponding application number. It will be published by the Institute in accordance with the technical standards of their available technological systems and the requirements compatible with the provided channels.

Notifications that, according to the Law, must be made electronically will be directed to the electronic means indicated by the applicant in the corresponding file, in accordance with the technical standards of the available technological systems.

 

TITLE IV

TRADEMARKS

 

Article 22.- The representation of the trademark will define the scope of the registration. In cases where the representation is accompanied by a written description, it must be consistent with the representation and not extend its scope of protection.

A trademark consisting of a letter, figure, or number must be represented graphically, with a distinctive design that grants it distinctiveness.

In the case of advertising phrases or slogans, applications for these must be filed solely as word marks and may not be included as part of a label.

 

Article 23.- Once a trademark application has been filed, the Trademark Registrar shall examine whether the required registration formalities have been complied with and order the corresponding publication.

If, during the examination, the Trademark Registrar identifies any error or omission, the applicant will be notified to make the required corrections or clarifications within a period of 30 days, without affecting the priority date of the application. If the required corrections are not made within the specified time limit, the application shall be considered abandoned. A decision declaring the application abandoned may be contested by submitting a complaint before the National Director of the Institute, in accordance with the general rules. If the complaint is denied, the application shall be considered abandoned.

 

Article 24.- Upon expiration of the opposition period, the National Director of the Institute shall conduct a substantive examination of the application, determining whether there are grounds for a substantive Office action.

The applicant shall be informed of this substantive Office action, along with any oppositions that have been filed, for a period of 30 days. Upon expiration of this time limit, regardless of whether the applicant has responded, the National Director of the Institute shall issue a final decision accepting or rejecting the trademark, either opening an evidentiary term or scheduling a hearing for judgment, as appropriate in voluntary or contentious proceedings, respectively. In the final decision, the application may not be rejected on grounds other than those stated in the opposition or in the substantive Office action.

 

Article 25.- The National Director of the Institute may request reports from other organizations and entities when required by legal or regulatory provisions. The Director may also request such reports when, for a better understanding of the matter, such information is deemed relevant, considering the technical expertise of those organizations.

 

Article 26.- Registered trademarks must be used in the same manner as in which their registration was granted, without prejudice to other formalities set forth in these Regulations. Reductions or enlargements in the size of a figurative or combined trademark will not affect its protection, provided that the other legal and regulatory requirements are met.

 

Article 27.- A trademark renewal application may be filed during the six months prior to its expiration and up to six months after, in compliance with the provisions of Article 18 bis B of the Law, regarding the payment of the applicable fees.

The renewed registration shall be valid from the expiration date of the trademark subject to the renewal application.

The Trademark Registrar may require any corrections or modifications deemed necessary regarding non-protectable elements that may appear in the registration for which renewal is requested.

 

TITLE V

INVENTIONS

 

Article 28.- The Institute shall establish the format and technical characteristics applicable to the documents submitted with patent applications.

 

Article 29.- Units must be expressed in the metric system and in degrees Celsius.

Notwithstanding the foregoing, if different units are used, their equivalence in the metric system and in degrees Celsius must be provided, with the original units placed in parentheses.

The symbols, terminology, or units used in any formulas included in the description must be those that are conventionally accepted in the respective science or art, and must be used consistently throughout the patent application.

 

Article 30.- Every patent application must include a title initially determined by the applicant, which must be clear and precise, allowing any person skilled in the relevant art or field to understand the technical problem it addresses and how it is solved.

Fictitious names or fanciful words that lack a clearly established meaning in the relevant field or specialty will not be accepted.

However, after reviewing the application and technical documentation, the expert or examiner may propose a new title for the invention to the National Director of the Institute, one that more accurately aligns with the requirements set forth in the first paragraph of this article.

 

Article 31.- When the applicant claims the existence of disclosures referred to in Article 42 of the Law, they must do so at the time of filing the patent application, submitting a written statement specifying the disclosures and the content of the publications, providing the corresponding documentation available at the time of submission. Such documentation may be submitted up until the application is accepted for processing; if not, the existence of the disclosure will be deemed not to have been claimed.

 

Article 32.- The abstract shall consist of a summary of the invention and an indication of the technical field or industrial sectors in which it applies. It shall be submitted in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

The abstract must allow for a basic understanding of the technical problem being addressed, its solution, and its application, and must include a representative drawing of the invention, when necessary for its understanding.

If the invention contains or consists of a pharmaceutical substance with an international nonproprietary name (INN), it must be included in the abstract.

 

Article 33.- The specification of the invention must be submitted as a separate document and shall include a description of the known art, a description of the drawings (if any), a description of the invention, and examples of its application, when necessary to enable a person skilled in the art to reproduce the invention.

The description of the known art shall begin by introducing the preferred field of application of the invention, citing the technical problem it addresses and referencing the solutions provided to that problem, aiming to make these solutions as close and current as possible from a technological standpoint, highlighting their disadvantages or technical drawbacks.

The description of the invention is a detailed and clear explanation of it, in reference to the numbered parts or components of the drawings, if they exist, and must be sufficiently complete to allow any person skilled in the relevant industrial sector to "reproduce the invention".

When the invention involves a living biological material, including viruses, or its method of production, in such a way that the invention cannot be fully reproduced in the specification, the Institute may request that such material be deposited with an internationally recognized organization for such purposes, and the institution and registration number must be provided.
When the invention contains or consists of a pharmaceutical substance with an international nonproprietary name (INN), it must be included in the specification.

The example(s) of the application of the invention shall consist of a detailed presentation of at least one embodiment of the invention and may be supported or illustrated by drawings, if any, in such a way as to make the invention reproducible.

 

Article 34.- An application may refer to only one invention. It may also refer to a group of inventions that maintain the unity of the invention, meaning that they are related in such a way that they form a single general inventive concept.

The fact that a patent is granted in violation of the unity of invention principle shall not be grounds for a cancellation action. However, once this situation is identified, and upon the request of the holder, the National Director of the Institute must proceed with the division of the invention for the remaining time before its expiration. The decision of the National Director of the Institute to order the division of the patent will be notified to the holder electronically, and the new titles will then be issued, with this being recorded in the original register.
Only a single basic solution to a technical problem can be protected in a single application. Therefore, it is necessary for each of the claims to converge to the independent claim or claims through appropriate links, provided that they maintain unity of invention.

 

Article 35.- The claims shall define the subject matter to be protected and must be supported by the specification. They shall consist exclusively of a description of the precise means leading to a novel result. They shall be preceded by an Arabic number and be as numerous as necessary to correctly define and delimit the invention.

The content of the claims must be self-contained and, therefore, they may not reference parts of the specification unless absolutely necessary, a circumstance to be determined in the respective examination of the invention. However, the claims may include numerical references mentioned in the drawings accompanying the application.

 

Article 36.- The set of claims shall be submitted as a separate document and must contain a first independent claim that designates the subject matter of the invention and its main characteristics, which may be further detailed in the following claims.

The claims shall be structured with an Arabic number, a preamble, the expression "characterized in that" and the characterization of the invention.

Claims shall not include phrases such as "as shown in the accompanying drawings", "according to the description provided", or similar expressions.

 

Article 37.- The preamble of the claim defines the invention in the technical field it refers to, with an indication of the technical problem it aims to solve. This part of the claim must include the common elements the invention shares with the prior art, and therefore must not contain novel elements.

Following the preamble, the characterization of the claim is introduced, linked by the expression "characterized in that." This phrase must always be present in each claim clause, serving to separate the preamble from the characterization for distinction purposes. It should be highlighted in bold or written in capital letters to facilitate its identification during the examination stage.

The characterization is the core of the claim, as it defines the elements, combinations, or groupings of elements that constitute the technical contribution meeting the requirements of industrial applicability, novelty, and inventive step, and therefore the merit for granting a patent. These elements must necessarily be present in each of the claims, with the first claim serving to reconstruct the invention and the dependent claims specifying those elements.

 

Article 38.- The definition of the invention itself, as well as what is ultimately covered by the granted patent, is exclusively that which is contained in the set of claims accepted by the Institute. However, the specification and drawings will be used to interpret the claims.
Each application may contain one or more independent claims, provided they correspond to the same inventive concept and are properly linked.

A set of claims may include an independent product claim, which may be linked to an independent process or method claim specifically designed for its manufacture, and with a claim that defines the apparatus or means specially created to carry it out.

Dependent claims, meaning those that include features from one or more previous claims of the same category, must always reference the number or numbers of the claims from which they depend, followed by the additional characterization, in which the limitations of the dependent claim are understood to be incorporated. Dependent claims should preferably be grouped immediately following the claim from which they depend.

A multiple dependent claim may serve as the basis for a new dependent claim.

 

Article 39.- Once the application is submitted to the Institute, the applicant may modify it until it is accepted for processing. If the modification includes subject matter that was not originally included in the application, its priority date will be the date of the modification.

Once the application is accepted for processing, the applicant may modify it, provided that such modification does not expand the content of the application as accepted for processing.

If the modification affects the substantive examination of the application, the Institute may order a new expert's report at the applicant's expense.

 

Article 40.- The term "drawings" shall refer to diagrams, flowcharts, and graphs. The application must include one or more of these categories when necessary to understand the invention.
The drawings must be presented separately, clearly executed, and at a scale that allows for reduction while maintaining detail definition. They may include one or more figures, which must be numbered consecutively.

 

Article 41.- Flowcharts may contain isolated words, provided they are commonly used in the relevant field, such as "input," "output," "mix," "configure," "oxidize," or others.

Graphs must include two types of annotations for each reference axis: a symbol, word, or words representing the physical or chemical parameter of the axis, and the symbol for the unit in the metric system. A more detailed description of the parameters and units must be provided in the specification. When it is necessary to distinguish different segments of curves in the graph, these must be marked with numerical references, which should be described in the specification.

 

Article 42.- The drawings and figures must be presented in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

The drawings and figures shall not contain explanatory texts, which must be included in the specification.
The figures shall not be cropped and must maintain the proper proportion and scale between their various elements, parts, and pieces.

 

Article 43.- The applicant may voluntarily divide their application into two or more applications, up until the appointment of the expert, provided that the scope of the invention is not expanded beyond the content of the specification accepted for processing by the Institute.

 

Article 44.- The Institute may at any time during the procedure order the modification or division of the patent application, if it considers that the application presents two or more solutions to a specific technical problem, with these solutions potentially being independently supported.
Similarly, the Institute may merge applications that present a technical solution which, when considered separately, lack consistency or are mutually dependent, producing the same result.

In all cases, the division of an application will result in one or more new applications, as applicable, which will retain the local priority of the original application.

 

TITLE VI

UTILITY MODELS

 

Article 45.- All provisions related to patents shall apply, insofar as relevant, to utility models.

Every utility model application must be accompanied by the documents specified in Article 58 of the Law, in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

TITLE VII

INDUSTRIAL DESIGNS AND DRAWINGS

 

Article 46.- Every industrial design or drawing application must be accompanied by the documents specified in Article 64 of the Law, in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

All provisions related to patents shall apply, insofar as relevant, to industrial designs and drawings.

 

Article 47.- The specification shall be structured by presenting an introduction and a description of the drawings.

The introduction shall indicate the industrial object in question and its preferred application.

The description shall associate the number of each figure with its general meaning, without delving into geometric details. It shall specify the type of view presented and the relative proportions or dimensions, without expressing particular units, for each element that makes up the design, so that the image of the object can be reconstructed through the reading of this description alone.

 

Article 48.- The design drawings must include, at a minimum, a top view, an elevation view, a side view, and a perspective view, with additional views being required depending on the complexity of the design.

In the case of industrial drawings, it will suffice to represent the drawing intended for protection on a single plan.

Photographs may be included as supplementary material, but they cannot replace the drawings. All figures in the drawings must be numbered.

 

Article 49.- Industrial drawings and industrial designs shall form separate, independent registrations.

Article 50.- For the purpose of determining the novelty of industrial drawings and designs, prior art shall also include drawings, designs, or figures that constitute another form of Intellectual Property, such as trademarks, copyright, utility models, or others.

 

TITLE VIII

DEPOSIT CERTIFICATE OF INDUSTRIAL DESIGNS AND DRAWINGS

 

Article 51.- In the case of applications for an industrial design or drawing deposit certificate, the applicant must express their intention to process the application under the expedited procedure for obtaining a deposit certificate, as established in Section 2 of Title V of the Law, in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

 

Article 52.- Once an industrial design or drawing deposit certificate has been issued, the corresponding extract shall be published. This publication must be requested by the applicant from the Official Gazette under their responsibility, within 20 days, under the penalty of the respective application being considered as not filed.

The publication must include at least the application number, the full name or corporate name of the applicant, the title of the industrial design or drawing covered by the corresponding deposit certificate, a representative figure of the industrial design or drawing, and must also indicate that the industrial design or drawing was subject to the expedited procedure under Section 2 of Title V of the Law, and therefore has not undergone a substantive examination that would allow the holder to exercise the actions contemplated in Section 1 of Title V of the Law.

Non-substantial errors in the publication may be corrected by a resolution issued ex officio or at the request of a party.

In the case of substantial publication errors, a new publication must be made within 10 days from the date of the resolution that orders such publication.

 

Article 53.- If a request for a substantive examination of the industrial design or drawing covered by the corresponding deposit certificate is filed in accordance with Article 67 bis F of the Law, a substantive examination to verify its compliance with the requirements set forth in Article 62 of the Law will be carried out.

Once the expert report has been issued or the deadline for submission has passed, the application will be placed in a state of resolution.

If the substantive examination is not approved, the Institute will automatically cancel the deposit certificate.

If the examination is favorable, the processing of the industrial design or drawing application covered by the deposit certificate will continue in accordance with the general opposition rules. The Institute will notify the holder electronically, so that they may request the publication of an extract in the Official Gazette within 20 days, at their own expense, under the penalty of the application being considered abandoned if they fail to do so.

The extract must include:

−         Deposit certificate number.

−         Full name or corporate name of the holder of the industrial design or drawing deposit certificate.

−         Title of the industrial design or drawing covered by the corresponding deposit certificate.

−         A representative figure of the industrial design or drawing covered by the corresponding deposit certificate.

−         Indication that the application has received a favorable substantive examination for the industrial design or drawing.

 

Article 54.- The opposition procedure shall be conducted in accordance with the general rules. However, the Institute shall issue a resolution requiring the corresponding expert to provide an expert opinion, based on the supporting documents submitted during the opposition stage and any evidence presented in the case, as applicable.

The parties may submit their comments to the expert opinion within 60 days from the date of its notification.

Once the comments to the expert opinion have been submitted or the deadline for doing so has expired, the application will be placed in a state of resolution, in accordance with the rules applicable to the general registration procedure.

 

TITLE IX

LAYOUT DESIGNS OR TOPOGRAPHY OF INTEGRATED CIRCUITS

 

Article 55.- All provisions related to patents shall apply, insofar as relevant, to layout-designs or topographies of integrated circuits.

 

Article 56.- Every application for a layout-design or topography of integrated circuits must be accompanied by the documents specified in Article 80 of the Law.

The prototype or model must allow for the identification and graphical representation of the topography, in such a way that it reveals the three-dimensional structure through drawings, photographs, or both.

Photographs must be submitted in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

The structure to be revealed includes:

a) The layouts for the manufacture of the product.

b) The masks or parts of the masks for the manufacture of the product.

c) The layers of the product.

Additionally, any supplementary documents that the applicant deems necessary to represent and individualize the product may be submitted.

 

Article 57.- The protection period for layout-designs or topographies of integrated circuits shall commence from the date of filing of the application for registration or the first commercial exploitation anywhere in the world. For these purposes, the expert report must expressly state whether it has identified any document providing conclusive proof of this date, or of the earliest foreign registration application date, which shall be taken as the date of commercial exploitation in the absence of the former. If neither of these dates is available, the term shall begin from the date declared by the applicant in accordance with Article 81 of the Law. In no case shall the protection period be calculated from a date later than the filing date of the application.

 

TITLE X

GEOGRAPHICAL INDICATIONS AND APELLATIONS OF ORIGIN

 

Article 58.- The registration of geographical indications and appellations of origin shall be under the responsibility of the Trademark Registrar, as these are considered, like commercial trademarks, distinctive signs.

 

Article 59.- The draft specific regulation for the use and control referred to in Article 97, letter f) of the Law, shall address the manner and conditions for the production and control of goods that will use the geographical indication or appellation of origin, and shall contain at least the following provisions:

a)       A description of the product, including its characteristics or qualities attributable to its geographical origin;

b)      A description of the extraction, cultivation, manufacturing, and/or transformation process of the product, as applicable;

c)       The delimitation of the corresponding geographical area;

d)      The identification of the body responsible for managing the geographical indication or appellation of origin, its functioning, and its powers;

e)      A description of the methods for controlling and supervising the use of the geographical indication or appellation of origin;

f)        The rights and duties of the authorized users of the geographical indication or appellation of origin;

g)       The procedure for amending the specific regulation for the use and control.

 

Article 60.- The registration of geographical indications and appellations of origin shall include the mentions referred to in Article 99 of the Law, the number of the respective application, a reference to the existence of the regulation for use and control, which is not required to be part of the registration, in which case the public location where it is accessible to interested parties must be indicated.

 

Article 61.- In the case of foreign geographical indications or appellations of origin, these may be registered in Chile regardless of the denomination or protection they have in their country of origin, provided they clearly comply with the definitions established in Article 92 and meet the other requirements set forth in the Law, as applicable.

In this case, the regulation for use and control shall be the same as that in the country of origin, properly translated. If no equivalent document exists, a detailed description of the production method in Spanish will suffice.

 

TITLE XI

PRIORITY OF APPLICATIONS

 

Article 62.- The priority date in Chile for any industrial property right shall be the date of filing of the respective application with the Institute.

 

Article 63.- Applications filed in Chile claiming priority from an application filed abroad shall also be subject to the provisions of the Law and this Regulations.

 

Article 64.- The priority right of an application filed abroad must be claimed at the time of filing the application in Chile, by citing the number, date, and country of the application from which priority is being claimed.

Additionally, the respective priority certificate issued by the competent authority of the country of origin of the priority, or one obtained through international document exchange platforms available to the Institute, in accordance with the requirements and technical standards compatible with the platforms provided by the Institute, must be submitted.

The certificate must be submitted within 90 days from the filing date of the respective application in Chile, properly translated into Spanish, if necessary.

Any priority not certified within this period shall not be considered in the file.

 

Article 65.- Any industrial property right may be granted, even while the period for claiming priority is still pending, in accordance with the Law or international treaties signed by Chile and in force, without prejudice to any superior right that a third party may assert in accordance with the Law or such international treaties.

 

TITLE XII

RECORDAL APPLICATIONS

 

Article 66.- Any change in ownership of an industrial property right, as well as any lien placed upon it, and, in general, any act or contract related to a registration maintained by the Institute, shall be carried out through the appropriate instrument, an extract of which shall be recorded in the margin of the registration, producing its effects regarding third parties only from the date of such recording, upon acceptance and payment of the corresponding fees.

The transfer of rights upon death shall be evidenced by the recording of an extract in the margin of the registration, which must include the corresponding legal certification of inheritance[11], upon acceptance and payment of the applicable fees, without which it shall not produce any effects with respect to third parties.

In any case, the extract of the recording shall contain:

a)       The assigned recordal number.

b)      The name of the party in whose favor the act, contract, or court ruling that originates the recording is granted.

c)       Identification of the act, contract, or court ruling that originates the recording.

d)      The date of the act, contract, or court ruling that originates the recording.

 

Article 67.- A trademark that is registered in more than one class may be transferred with respect to all or some of them, provided that there is no overlap in the scope of protection of the divided registrations. The original registration will be divided and recorded under the corresponding sequential number, but will retain the priority, liens, and duration of the original registration for all legal effects.

The original registration shall include a note of the division and the new numbers assigned to the divided registrations.

TITLE XIII

REGISTRIES ADMINISTERED BY THE INSTITUTE

 

Article 68.- The Institute shall keep a special register for each of the industrial property rights recognized by the Law, in which the following information, at least, shall be recorded:

a)       Serial number for each protected right.

b)      Full name or corporate name, address, and tax identification number (RUT[12]), if applicable, of the right holder.

c)       Name, title, or subject matter of the protected right, as appropriate.

d)      Filing date of the application and granting date of the registration.

e)      Recordals.

 

Article 69.- The Institute shall be responsible for the custody of Powers of Attorney or authorizations granted to the appointed representative(s) for the processing of applications for the registration and protection of industrial property rights. For this purpose, the powers of attorney or authorizations must be submitted using the form provided by the Institute and must be accompanied by the following documents, in accordance with the requirements and technical standards compatible with the platforms provided by the Institute:

1.       A copy of the identity document of the representative(s);

2.       Power of Attorney or authorization, in compliance with the applicable requirements.

Once these documents are received, the Institute shall assign a custody number to each Power of Attorney or authorization solely for the purpose of its subsequent identification in the processing of applications by the interested party.

 

Article 70.- Certifications issued by the Institute regarding the validity, registration, liens, transfers, and other acts or contracts related to each right shall be based on the information recorded in the respective registers.

The registers for patents, utility models, industrial designs, and drawings, as well as layout designs or topographies of integrated circuits, shall be managed by the Patent Registrar; while the registers for trademarks, geographical indications, and appellations of origin shall be managed by the Trademark Registrar.

 

Article 71.- The registers referred to in this Title shall be kept properly updated in accordance with the requirements and technical standards compatible with the corresponding platforms of the Institute.

The registers shall be made available free of charge, in accordance with the requirements and technical standards compatible with the platforms provided by the Institute.

 

TITLE XIV

NON-VOLUNTARY LICENSES

 

Article 72.- Non-voluntary licenses may be declared invalid or modified in accordance with Article 51 bis D of the Law.

TITLE XV

EXPERTS AND EXPERT REPORTS

 

Article 73.- Expert reports required by the Law and the Regulations shall be carried out by individuals whose qualifications have been previously deemed sufficient by the National Director of the Institute.

The experts referred to in the previous paragraph must be properly listed in a special registry kept by the Institute, which shall be periodically updated in accordance with the nature of the various registration procedures. The inclusion and removal of experts from the aforementioned list, which will be public, shall be formalized by a resolution issued by the National Director of the Institute, except as provided in the final paragraph of this article.

Each expert report must be signed by the expert who issued it.

Given the specialized nature of certain applications, the Institute may, either ex officio or at the request of the parties, also require technical reports from individuals or legal entities. In the latter case, such reports shall be signed by the legal representative of the entity and the professional(s) who participated in their preparation.

 

Article 74.- Notwithstanding any special provisions established in the Law or these Regulations, all expert reports shall be at the applicant's expense. The fee for such reports shall be periodically set by resolution issued by the National Director of the Institute. Applicants shall have a period of 60 days, in accordance with Article 8 of the Law, to provide evidence of the payment of the corresponding fee to the Institute, before proceeding with the appointment of the expert who will analyze the application.

In special cases, as qualified by the Institute, and given the technical complexity and the nature of the subject matter of an application, the National Director may decide that it should be studied simultaneously by two or more experts from different areas of knowledge. For this purpose, the applicant shall pay the fees set by the Institute for each expert appointed to study the application.

Expert reports under Article 18 bis A of the Law shall be distributed by the National Director, ensuring an equitable and balanced allocation among the experts, taking into account their respective areas of expertise.

 

Article 75.- The acceptance of the expert appointment must be recorded in the respective file and shall be made within a period not exceeding 20 days from the appointment. If the appointment is not accepted within this period, it shall be deemed refused, and the National Director of the Institute shall proceed to appoint another expert, who shall have the same period to accept or refuse the appointment.

The refusal to accept the appointment must be justified.

 

Article 76.- The expert’s responsibility regarding the expert report shall consist of the following:

a)       To assess the fulfillment of the substantive requirements of the right applied for, as set forth in Articles 32, 56, 62, and 75 of the Law.

b)      To evaluate the technical sufficiency of the documents submitted by the applicant.

c)       To verify the state of the art in the technical field to which the application refers.

d)      To review the application and each of the documents that form part of the file.

e)      To prepare and submit the expert report to the Institute.

 

Article 77.- The expert report shall contain, depending on the nature of the right under examination:

a)       Search of the state of the art.

b)       Analysis of novelty.

c)        Analysis of inventive step.

d)      Analysis of industrial applicability.

e)      Technical analysis regarding the fulfillment of the other requirements established in the Law and the Regulations.

 

Article 78.- To assess novelty with respect to similar industrial designs or drawings, the expert or examiner must take into account, in addition to the provisions of Title V of the Law, the following:

a)       The external shape. In this case, the new shape must not be directly associated with the function it is intended to fulfill.

b)      The actual differences in ornamental elements compared to other similar designs or industrial objects. For these purposes, ornamental elements must be interpreted as the plastic form.

c)       The area in which the ornamental elements are located, compared to similar designs or industrial objects.

d)      The arrangement of ornamental elements within their respective areas.

e)      The overall external aspects of similar designs, in order to determine whether the applied design is different.

 

Article 79.- The expert or examiner, through the Institute, shall request additional documents from the applicant when it is deemed that the documents submitted are insufficient to determine the fulfillment of the requirements established by the Law for each right.

 

Article 80.- Once an expert report has been issued, it shall be notified to the applicant and, if applicable, to the parties, through the official list of notifications prepared by the Institute[13]. In cases where deemed appropriate, the Institute, either on its own initiative or at the request of the interested party, may request a second technical opinion. This opinion shall be obtained from a second expert, a commission of experts from the relevant technical field, or from internal examiners designated by the National Director of the Institute.

 

Article 81.- The Institute shall review the expert's report to verify and analyze the concepts assessed by the expert during their examination and to confirm whether there has been consistency in the criteria with the Institute.

Expert reports shall be considered as evidence to be assessed in the decision of the National Director of the Institute.

 

Article 82.- The expert or examiner shall conduct a search of the state of the art, for which national or international sources may be used, in accordance with the instructions and guidelines issued by the Institute.

 

Article 83.- The National Director of the Institute shall issue a public notice, through a publication in the Official Gazette, to compile a list of experts to be registered for performing the technical examination of applications for patents, utility models, industrial designs, drawings, and layout designs or topographies of integrated circuits. The list shall include all individuals whom the National Director of the Institute deems technically qualified to carry out such examinations in the required fields.

The provisions set forth in this Title shall not apply to expert reports other than those referred to in Article 8 of the Law.

 

TITLE XVI

FINAL PROVISIONS

 

Article 84.- Payments corresponding to the rights referred to in paragraph 4 of the Law shall be verified by the Institute, in accordance with the requirements and standards compatible with the applicable systems, within the time limits established by the Law.

 

Transitional Provision.- Applications processed by the Institute under these Regulations must be submitted through electronic documents or using the electronic formats available on the relevant platforms, in accordance with Articles 18 and 30 of Law No. 19,880[14], starting from the phased implementation dates set for Law No. 21,180 on the Digital Transformation of Public Administration[15].