2nd Part. The value of ideas. Patents and Trademarks
As already mentioned in the previous post (see 1st part), Industrial Property Rights grant an exclusive property right over inventions and creations of commercial nature. Software code, algorithms and all ideas and images related to a Startup represent a fundamental entrepreneurship property that requires fair assignation and legal protection.
We have already cleared out that without proper registration before the competent authority, there are no rights whatsoever. Now the question is, how is the protection of an idea generated? But, above all, does Intellectual Property possess the scope to reach any kind of idea?
For an idea to receive protection under the Industrial Property System, its materialisation is first of all required. In Chile, there are several different requirements and conditions that play an important role in the safeguard of these ideas. Moving on, we will focus primarily on two of these: Patents and Trademarks.
Patents are the most common system to protect ideas and of course, inventions. Throughout a patent, an excluding and temporary right is granted to an inventor (usually a 20 year timespan that is valid in the country it was requested) that allows its holder to protect and exploit its work without the interference of third parties. It also grants the possibility to sell the invention or to cede the rights to another entity to be traded under license. Law Nº 19.039 on the protection of Industrial Property rights establishes that “Patents may be obtained for all sorts of inventions, be them products or process, in every technology field, as long as they are novel, possess an inventive level and are susceptible of industrial appliance” (art. 32). Those interested can patent their idea by applying before the INAPI, the whole registration process is detailed in their website. Once it is granted and the right’s payment is attested, the inventor will obtain a certificate granting protection to his product or process as of the date of the request. In turn, the patent registry grants five types of rights, which are, Invention, Utility Model, Industrial Drawings, Industrial Designs, Layout Schematics or Integrated Circuitry Topographies, also establishing Trademarks, Geographical Indications and Origin Denominations.
It is critical for a Startup to take into account the trademark, meaning, “Any sign susceptible of graphical representation able to distinguish within the market products, services, or industrial or commercial establishments” (art.19 Law 19.039) even advertising or propaganda slogans. Registering a trademark before INAPI allows trademarks and services to be identified, earning a territorial and temporary legal protection (that lasts 10 years and it is indefinitely renewable for the same period). Thus, the registrant may be able to differentiate his products and services, avoiding plagiarism and confusions involving third parties. Although, the trademark is protected within the country where it has been registered, it is possible to obtain an international register valid among the signatory countries of the “Madrid System for the International Registration of Marks” of 1891 and its protocol, adopted in 1989. Through this system the Contracting Parties that look forward to protect the mark are selected.
It should be noted that at the moment, Chile is not a member of the Madrid System.
With regards to Patents, Chile has not yet ratified the Patent Cooperation Treaty (PCT), which seeks simplifying the international patent application system. In the meantime, article 34 of Law 19.039 establishes that “Where a patent has been applied for previously abroad, the party concerned shall have priority for a period of one year, reckoned from the date of filing in the country of origin, for the filing of an application in Chile”.
Now that we know how and when to protect our ideas for technology based ventures, how to protect developed software
To be continued…
Giorgia Vulcano, Lawyer.
Photo: David Marcu (CC0)