Innovate Magazine

INNOVATE is the online magazine by and for AIPLA members from IP law students all the way through retired practitioners. Designed as an online publication, INNOVATE features magazine-like articles of 500-1,500 words in length on a wide variety of topics in IP law.

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Bill Introduces Two New Actions in Chilean Trademark and Patent Law

By Francesca Rodriguez

In July 2018, the National Institute of Industrial Property (INAPI) proposed a bill to partially amend the Chilean Industrial Property Law (No. 19.039) by including new provisions that would pave the path for the self-execution of several international treaties[1] to which Chile must adhere, as part of the future implementation of the so-called TPP-11 (Comprehensive and Progressive Agreement for Trans-Pacific Partnership, CPTPP) and the ongoing renegotiation of the Free Trade Agreement signed with the European Union in 2003.

This bill encompasses several provisions that tend to bring the Chilean Industrial Property Law up to date in accordance with international standards.[2] However, there are two important topics, both in the trademark and patent arenas, that have captured most of the attention among stakeholders.

Non-use cancellation action of trademarks

This provision is one of the most urgently sought by many actors in the trademark environment, due to the undesirable consequences that the current status is allowing (for example, registration of trademarks with only the intention of blocking the entrance of a competitor into the market).

The bill establishes that it will be possible to request the cancellation of a trademark registration in those cases where the trademark registration owner cannot demonstrate its real and effective use over a period of five years as of the registration date. This action can be filed by anyone showing a legitimate interest, and the burden of proof will be on the trademark registration owner.

Notwithstanding the preceding, the current version of the bill includes a transitory article (5°) which establishes that the five year term wherein the use of a trademark is required will be only counted from the date of its first renewal after this new law enters into force. This situation should give trademark registration owners enough time to prepare new strategies of commercialization and promotion of their goods or services in order to avoid the cancellation of their trademarks.

Patent right usurpation action

The inclusion of this action in the bill provides a better alternative than the only one available in the current IP Law (article 50a). Article 50a only allows the true inventor or legitimate assignee of patent rights to file a cancellation action against a usurper of inventorship/ ownership of the patent rights. Naturally, this cancellation action is intended to annul the patent, which is far from being an effective and fair legal remedy, rather than restoring the rights to the true inventor or legitimate assignee.

With this new action, it will be possible to declare the usurpation of the patent rights and thereby proceeding to “transfer” the rights to whomever should hold the rights by virtue of legitimate inventorship/ownership, instead of canceling the patent and putting the invention into the public domain. Compensation for corresponding damages is also permitted under this provision of the bill.

Nonetheless, as proposed in the bill, this action will have to be brought by the interested party before the civil ordinary courts of justice. This seems impractical, in view of the specialty and wide trajectory of the Industrial Property Court, which should be the court naturally competent on such matters, as it is the one currently deciding all controversies related to inventions created within the context of employment and services contracts.

The bill was made available to Industrial Property stakeholders for a brief comment period by the end of September 2018. The Chambers of Deputies delivered the bill to the Senate in April 2019, for indications before a final constitutional review by a mixed commission between the two houses of Congress, promulgation by the President of the Republic of Chile and further publication in the Official Gazette. As of the date of submission of this article, no indications by the Senate have been issued yet.

[1] The Madrid International Trademark System, the Singapore Treaty on the Law of Trademarks, the Hague International Design System, the Locarno Design Classification Agreement and the Patent Law Treaty and the Strasbourg Agreement on Patent Classification.

[2] Such as: i) broadening the trademark definition so as to cover the olfactive and tridimensional ones; ii) new rules governing the collective and certification trademarks; iii) incorporation of provisional applications for patent rights; iv) clarifications on the maximum patent term extension to get via a supplementary protection request; v) new patent right limitations, namely, private acts with no commercial purposes, experimental and educational acts and the preparation/manufacture of drugs under medical prescription in certain individual cases; vi) extending the validity term of industrial design registrations from 10 years to 15 years; and vii) setting up a new abbreviated procedure for granting industrial design registrations without substantive examination, among others.

Francesca Rodríguez is specialized in Industrial Property Law, with an emphasis on matters related to invention patents, utility models, plant varieties and industrial designs.

She joined Alessandri in 2010 and her practice is particularly oriented to help national companies and universities, as well as multinational companies, to protect, prosecute, defend and manage their patent portfolio in Chile and abroad. Her academic background and expertise on the Industrial Property regulations of the Andean Community (Colombia, Bolivia, Ecuador and Peru) additionally gives her the ability to provide legal advice on the patent law system of several key market counties in the Latin American region.

Francesca works with clients whose inventive products and processes are related to as diverse technical areas, as life sciences, mechanical, civil and electrical engineering and 3D printing, among others. Her experience has allowed her to help startups and growing companies to gain value from their intellectual property assets.

Francesca was ranked in Chambers and Partners Global 2013 as “Foreign Expert.

She is a member of the Chilean Industrial Property Law Association (ACHIPI), the American Intellectual Property Law Association (AIPLA) and Secretary of the Board of the Licensing Executives Society Chile (LES-Chile).



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