The new Chilean Industrial Property Law (Chilean IP Law), which came into effect on May 9, 2022, establishes the possibility of requesting the Restoration of the Right of Priority. In particular, article 34 of the Law indicates: "The applicant may request the restoration of the right of priority within two months following the date of expiration of the priority period."
The request for restoration of the right of priority must be submitted together with the application filing before the Chilean Patent Office. If the aforementioned period of two months elapses without the restoration of the right of priority having been requested, or if the restoration has been requested within this period but is rejected, the application will be considered as losing priority. In the event that the application claims more than one priority, the deadline is calculated from the oldest priority date.
The aforementioned made possible to equalize the processing conditions between national applications via the Paris Convention and National Phase applications, in accordance with the Patent Cooperation Treaty (PCT) in their International filing, since the Chilean Patent Law already considered in its article 116 the possibility of requesting the restoration of the right of priority in PCT applications. Article 116 of the Law indicates: When the international application has a filing date after the expiration date of the priority period, in accordance with the Patent Cooperation Treaty, the applicant may request the restoration of the right of priority before the Chilean Patent Office as Receiving Office, within a period of two months from the expiration date of the priority period. In the same case, the applicant may request the restoration of the right of priority before the Chilean Patent Office as the Designated and/or Elected Office at the time of entry into the national phase, in the event that the request for restoration of the right of priority has been duly requested before the corresponding Receiving Office and this one has not acted or has not accepted it. In both cases, the request must be made together with the application filing, proving payment of the respective fee; expressing the reasons for non-compliance with the priority deadline, and providing the corresponding evidence.
On the other hand, in the case of PCT applications whose entry into the National Phase in Chile occurs after the 30-month period counted from the priority date, the Chilean IP Law defines the reestablishment of rights in accordance with Article 117: If the thirty-month period established in the previous paragraph has expired, the applicant may request the reestablishment of rights before the Chilean Patent Office. The request must be made in conjunction with the application filing, proving payment of the respective fee; explaining the reasons for non-compliance with the deadline, and providing the corresponding evidence.
In both cases, that is, in the request for restoration of the right of priority (Art. 34) and in the request for reestablishment of rights (Art. 117), the applicant must indicate that the failure to comply with the deadline occurred despite the due diligence required by the circumstances or that such non-compliance was not intentional, providing the corresponding explanations and evidence along with the application.
Additionally, in Chile, there is the concept of Non-Prejudicial Disclosures, defined in article 42 of the Chilean IP Law, which indicates: "Disclosures made within the twelve months prior to the submission of the application, if the public disclosure:
a) was made, authorized or derived from the patent applicant, or
b) has been made due to or derived from abuses and unfair practices to which the applicant had been subject.”
On the other hand, the novelty of a patent application is evaluated based on article 33 of the Law, which establishes that "the state of the art will comprise everything that has been disclosed or made accessible to the public, anywhere in the world, by publication in tangible form, sale or marketing, use or any other manner, before the date of filing of the patent application in Chile or the priority claimed."
Therefore, in order that non-prejudicial disclosures are not considered part of the state of the art, the applicant must declare the existence of such innocuous disclosure(s) at the time of submitting the application. This declaration should be accompanied by a document indicating their nature and subject, along with any such publications that are available at the time of filing the application. Most importantly is that all non-prejudicial publications must be declared so that they do not affect the novelty of the invention during the substantive analysis performed by the Patent Office.
PCT applications filed in their National Phase may also declare non-prejudicial disclosures as established in Rule 51bis.1.a) v) of the PCT Regulations.
Therefore, in Chile, there are options to file applications that have lost priority as long as there is a justification for the loss or non-compliance.
