Due to continuing requests from applicants regarding advice, on February 4th, 2010, the Chilean PTO issued a circular letter in order to clarify the scope of so-called harmless disclosure, as defined by art. 42 of the current Chilean Patent Law.
According to the opinion given therein, patent applications published abroad can be filed in Chile within a 12-month-grace period counted as from publication date, granting the privilege that this publication will not be considered as prior art when determining novelty and inventive step of the claimed invention.
This can be of importance for both PCT-applications as well as national applications to be filed in Chile, e.g. when the 12-month-priority term according to Paris Convention has expired but nevertheless, a patent application can be filed as long as the 12-month-term counted as from the first disclosure has not expired.
In detail, art. 42 establishes that any disclosure made one year or less before the effective filing date in Chile shall not be considered prior art to determine novelty or inventive step of the claimed invention, if:
- The disclosure was made or authorized by the applicant or derived from the applicant;
- Such disclosure was carried out with abusive intentions or derived from unfair competition;
Point 4 of the circular letter explicitly mentions that art. 42 is to be fully applied on published patent applications as the Patent Law has not excluded them from being harmless disclosure.
The Chilean PTO has therefore decided to adopt a wide interpretation of this term, in contrary to countries where a restricted interpretation is applied by the respective PTO establishing that publications of patent applications carried out by any foreign PTO do not fall under the term of harmless disclosure for asserting the respective grace period, like e.g. in the guidelines for examination of the Argentine PTO.
Upon filing the application, the applicant must declare that disclosure falling under art. 42 took place as well as submit a written statement describing the publication carried out and adding the corresponding documentation available at the moment of filing.