Wolfenson Lawyers provides advice and support in intellectual property matters.
It is essential for a company to distinguish itself from others, and the first step to make it possible is by registering a trademark. The trademark grants its owner the exclusive and exclusive right to use it in the way that has been conferred on it in the registry. In addition, it empowers you to prevent a third party from using, without your consent, identical or similar marks. It is for this reason that our attorneys provide the necessary advice and guidance so that our clients obtain their legal trademark registration.
On the other hand, human creation has allowed us to get to where we are today. Each idea, project or invention is a source of wealth and future personal and collective development. Wolfenson encourages the development of the imagination in society, protecting his intellectual rights over his work; by legally obtaining a patent for our clients.
Here is a legal guide to provide you with guidance on registering trademarks and patents:
What is intellectual property?
In a broad sense, intellectual property is related to all creation produced by the human mind; this is inventions, utility models, brands, literary and artistic works , etc.
In effect, the concept of Intellectual Property includes:
Industrial Property: includes invention patents, utility models, trademarks, collective, certification, and geographical indications and designations of origin . In Chile , the body in charge of the Registry of Industrial Property rights , referred to in Law 19.039 , and its Regulations, is the INAPI (National Institute of Industrial Property), formerly the Department of Industrial Property .
Copyright : Relates to and protects the rights of performers over their performances, the rights of producers of phonograms over their recordings, and the rights of broadcasting organizations over their radio and television programs . In Chile, the body in charge of the Registry of copyright and related rights, and the other functions that Law N ° 17,336 , on Intellectual Property and its Regulations , is the Department of Intellectual Rights, dependent on the Directorate of Libraries, Archives and Museums, of the Ministry of Education.
Who is a brand?
A brand is any sign capable of graphic representation, capable of distinguishing in the market; products, services, or commercial or industrial establishments .
Trademarks can consist of a word (word mark) or combination of words (mixed mark), figures; letters; symbols; drawings (figurative marks) and even auditory signs (sound marks).
Propaganda or advertising phrases may also be registered, provided they are attached to a registered trademark of the product, service or establishment for which it is to be used.
The protection granted by the trademark is territorial and temporary : it protects nationally for 10 years, renewable indefinitely for equal periods, upon payment of the corresponding fee.
What are the advantages of registering my brand?
When purchasing a product or service , consumers choose a certain brand because it has associated certain quality and characteristics.
The trademark is an effective instrument to distinguish our products in the market and differentiate itself from others that exist in it, avoiding confusion among consumers .
The registration of a trademark offers legal protection to the owner, who may prevent third parties from using the trademark without their consent , in the course of commercial operations, to distinguish products or services similar to those for which it is registered.
Whoever has a trademark registry that is used without their consent, has two types of legal actions :
Civil , among other things, compensation for damages.
Criminal , for the crimes established in the Law.
How is the procedure performed?
The procedure for registering a trademark in Chile basically comprises three stages: entry and examination of the application form, procedure for publication of the extract in the Official Gazette and examination of the merits of the application.
The first step is the presentation of the respective application, which must request protection for products, services, commercial establishments, industrial establishments or advertising phrases , establishing the class (es) for which protection is requested with the specific activity within of the respective class (eg brand for furniture, beer, clothing, financial services). A formal examination of this application is made to verify that the legal and regulatory requirements are met. Once the formal examination is approved, the application must be published in the Official Gazette so that third parties can oppose the application in case they consider they have a better right. Whether there has been opposition or not, INAPI conducts a substantive examination to verify that the trademark application does not violate any of the legal grounds for illegality . Once the application passes this substantive examination, the National Director of INAPI grants the administrative resolution that grants the trademark and subsequent registration of it. If the trademark application is rejected , there is the possibility of appealing this resolution before the Industrial Property Court .
How to license a brand?
The owner of a registered trademark can license its brands to other companies. In this case, ownership is maintained and one or more companies are simply authorized to use the trademark or trademarks . The license is an authorization to use the mark in the territory where it is registered, and allows the licensee to use said sign without fear of being sued by the owner, who has exclusive rights to it. For its part, the owner can obtain additional income through this channel.
In practice, trademark licenses are often granted under broader agreements, such as franchise agreements , or agreements that include licensing of other intellectual property rights , such as patents , knowledge specialized and technical assistance with a view to producing a certain product.
The license of use on a trademark will not produce effects against third parties if it is not noted outside the registration in INAPI , for which the registration of the license must be requested by filling out a form specially made available to our users, "FPI-30" , attaching in original or authorized copy the copy of the document that contains the license , and paying the legal rights within the legal term.
What is a patent?
Patents , also known as invention patents , are the most widespread means that exists to protect the rights of inventors .
By patent is understood the exclusive right granted by the State for the protection of an invention . The patent gives its owner the exclusive right to sell or assign its rights to another person to commercialize it under license , or to prevent third parties from commercially exploiting the protected invention for a limited period of time, in exchange for disclosing the invention. to the public . Accordingly, the patent owner, its owner, may prevent others from manufacturing, using, offering for sale, selling, or importing the patented invention without permission, and may sue anyone who exploits it without their permission .
That is, the patent consists of the right granted to an inventor by the State and that allows the inventor to prevent third parties from exploiting their invention by commercial means for a limited period, which is usually 20 years from the date of filing of the application, being applicable only to the country where protection has been requested (territoriality principle).
The theory on which the system is based is that the financial benefits derived from the exploitation of the patent and the disclosure of the resulting inventions for their diffusion and public use, will promote innovation and raise the technical level of the industry of a country, with obvious benefits for your trade.
In effect, by granting an exclusive right , the patent becomes an incentive insofar as it offers the inventor; recognition for his creative activity and material compensation for his commercial invention. These incentives, in turn, promote innovation, which also contributes to improving people's quality of life. In return for obtaining exclusive rights , the inventor has the obligation to disclose the patented invention to the public , so that third parties can benefit from the new knowledge and thus contribute to technological development .
Hence, disclosure of the invention constitutes an essential criterion in patent granting procedures. Everything has been thought of in the patent system so that the interests of the inventors and the interests of the general public are taken into equal account.
It is wrong to believe that patents apply only to complex physical and chemical processes and products , or that they are only useful to large companies . In general, patents can be obtained for any domain of technology , from paper clips to complex pharmaceuticals. There are thousands of patents for everyday products such as filters, glass bottles, fabrics or bicycles.
What are the requirements to patent my invention?
There are three fundamental patentability criteria . These are that the invention has the element of novelty; the second criterion establishes that an inventive element exists, and the third says that the invention can be applied industrially .
Be novel: That is, it does not exist before in the state of the art. The state of the art is everything that has been disclosed or made accessible to the public, anywhere in the world, through a tangible publication, sale or marketing .
From the requirement of novelty derives the importance of maintaining the confidentiality of a certain invention before registration is requested. For this, contractual protection through confidentiality agreements will be essential, both with dependent workers or with the people in charge of R&D activities, as well as with potential investors or people who for one reason or another will learn about the invention.
Have an inventive level: That is to say, that for someone skilled in the corresponding field, the invention cannot be obvious or derive, obviously, from the state of the art.
Be susceptible to industrial application: That is, it can, in principle, be produced or used in any type of industry , be it manufacturing, crafts, mining, agriculture, or other.
The protection provided by the State is territorial, that is, only at the national level and for a period of 10 or 20 years, as appropriate for the industrial property right requested, from the date of filing of the application.
How to register my patent?
The state of the art, state of the art or prior art , includes everything that has been made available to the public anywhere in the world, through a tangible publication, sale or marketing, use or any other means, before of the filing date of a patent application or of the priority claim of a right.
An example of a strategy to follow:
Classify the invention using the International Patent Classification (CIP), since classifying the technical objects of the inventions allows a narrow and reasonably safer search.
Use combined search , using the International Patent Classification (CIP) and key terms.
Carry out a search in a database containing "non-patent" bibliography.
Reasons to carry out the search for the state of the art in the field of patents
Evaluate the scope of existing Intellectual Property rights: infringement searches.
Evaluate patentability requirements: have reasonable assurance that the invention will meet the patentability requirements.
Technological study: fundamental search to plan research activities or commercial activities.
Determine technological updates: an important search to keep abreast of new technologies and recent advances.
International Patent Classification (CIP) Codes
All patent documents are classified by means of specific codes that identify the technological group or groups to which the invention described in the document belongs. This type of classification can reduce the limitations of a search associated with language and terminology, making it easier to obtain patent documents . Although there are different classifications, the International Patent Classification (CIP) is recognized and used worldwide, since it covers practically all imaginable technologies and is regularly updated to improve the system and take into account technical developments .
Wolfenson Abogados provides excellent legal advice on intellectual property.
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If you need more information and legal advice regarding the registration of trademarks and patents for companies, we invite you to contact our lawyers in Santiago. We are located at Avenida Apoquindo 2930 in the commune of Las Condes, Santiago de Chile.