Ongoing Challenges and Concerns
Chile remains on the United States Trade Representative (USTR) Priority Watch List in 2023. The United States continues to have serious concerns regarding long-standing implementation issues with a number of intellectual property (IP) obligations under the United States-Chile Free Trade Agreement (FTA) of 2003 that remain outstanding twenty years since the FTA entered into force. Chile took a step forward in 2022 by acceding to the Madrid Protocol Concerning the International Registration of Marks and modernizing many aspects of its IP regime, including criminalizing trademark falsification, recognition of non-traditional marks, introducing provisional applications for patents, incorporating a broader definition of trade secrets, and extending the term of protection for industrial designs to 15 years. Concerns remain regarding the availability of effective administrative and judicial procedures, as well as deterrent-level remedies, to right holders and satellite service providers.
Pharmaceutical stakeholders continue to raise concerns over the efficacy of Chile’s system for resolving patent issues expeditiously in connection with applications to market pharmaceutical products, and over the provision of adequate protection against unfair commercial use, as well as unauthorized disclosure, of undisclosed test results or other data generated to obtain marketing approval for pharmaceutical products. Stakeholders also have expressed concerns over the vagueness of certain provisions of the Ley de Fármacos II (Medicines Legislation II), which has stalled in the Chilean legislature. The United States continues to urge Chile to ratify and implement the 1991 Act of the International Union for the Protection of New Varieties of Plants Convention (UPOV 91) and improve protection for plant varieties.
Developments, Including Progress and Actions Taken
On February 7, 2022, Chile’s law that sanctions illegal trade and intellectual piracy, was enacted to strengthen control actions, and provide the police with more efficient tools to enforce the law. The law will make it possible to identify and disrupt organized crime gangs dedicated to illegal trade, prosecuting the sale, reproduction, marketing, or receipt of counterfeit or unauthorized products. The law covers the following crimes: counterfeiting, reproduction, or unauthorized sale of literary, artistic, or scientific works protected by the intellectual property law; as well as phonograms, videograms, phonographic records, cassettes, videocassettes, films or motion pictures, and computer programs protected by intellectual property law. The police, municipal inspectors, and officials of the Chilean Internal Revenue Service are authorized to monitor the compliance with the regulations. They will be permitted to demand municipal or sanitary permits, as well as the documents that prove the origin of the goods. The new law also provides the Public Prosecutor’s Office with new mechanisms that facilitate investigative and inspection work.
Reform to the Industrial Property Law entered into force on May 9, 2022. Law 21,355, or also known as “INAPI Short Law,” modernizes the regulatory framework that dates to 1991 for trademark and patent prosecution. One of the most significant changes is the incorporation of provisional patents. Inventors, universities, research centers, and companies that file a patent application will have 12 months to gather all the necessary information. For the first time in Chile, this law gives the possibility to protect non-traditional trademarks, and includes a new conceptual definition that offers numerous possibilities, for instance, protecting tri-dimensional marks. The law removed the requirement to include a graphic representation.
Chile continues to carry out enforcement efforts to combat counterfeits. The Intellectual Property Brigade (BRIDEPI) of the Chilean Investigative Police (PDI) reported that it seized more than 1.48 million counterfeit products in 2022, worth a total of US$ 6.5 million and arrested 798 individuals on charges related to IPR infringement. In addition, the National Customs Service reported that between January and September 2022 it seized more than 8.9 million counterfeit products worth a total of $ 40.8 million.
In any foreign market, companies should consider several general principles for effective protection of their intellectual property. For background, U.S. exporters are encouraged to review the information on Protecting Intellectual Property and Stopfakes.gov for more resources.
To access Chile’s ICS, which includes information on the protection and enforcement of intellectual property rights, visit the U.S. Department of State Investment Climate Statement website.
IP Legal Advisor for Chile and the Andean Region
U.S. Patent & Trademark Office – USPTO, U.S. Department of Commerce, ITA, U.S. Embassy Peru
Tel: +511920060597