The ruling reaffirms the substantive nature of the statute of limitations and the autonomy of divisional patents, specifying the criteria applicable according to the dates of application and grant.
Recently, the Industrial Property Court handed down an important ruling in a patent invalidity lawsuit (Rol TDPI No. 001093-2024), ruling on the statute of limitations exception raised in a pharmaceutical patent invalidity lawsuit.
This is a significant ruling, as there are few in Chile that explicitly address the nature and limitation period of patent nullity actions filed before the 2005 reforms but granted after them.
In addition, the court develops substantive criteria on the legal nature of patents, the statute of limitations, and the relationship between divisional patents and their original applications.
The dispute originated in a nullity action filed by a company in 2023 against patent registration No. 53,916, which was granted to a pharmaceutical company in 2016 and corresponds to a divisional application derived from a “parent” application filed in 2002, before the amendments introduced by Law No. 19,996 in 2005.
The defendant (patent holder) raised a statute of limitations defense, arguing that the action for invalidity had expired more than five years after the date of grant of the patent in 2016, according to the current Article 50 of Law No. 19,039.
The plaintiff, on the other hand, argued that, as it was a divisional patent of an application filed before the 2005 reforms, the original regime of Law No. 19,039, which provided for a ten-year statute of limitations, was applicable, arguing, in summary, that:
- Divisional patents share the substantive nature of the “parent” patents from which they derive.
- Patents applied for before 2005 but granted after that date—as was the case with the parent patent and, by extension, the divisional patent, which shares its nature—should be governed in substance by the law in force at the time of filing the application.
- That the statute of limitations is a substantive rule of invention patents and not merely a procedural one.
INAPI accepted the exception, determining that the statute of limitations is a procedural rule and therefore the law in force at the time of filing the action applies. In response, the plaintiff appealed, reiterating the three points mentioned above.
In ruling on the appeal, the Industrial Property Court acknowledged that the debate centered on determining the nature of the statute of limitations and the regulations applicable to patent invalidity actions arising from applications filed before the 2005 reforms came into force but granted thereafter.
The ruling is noteworthy in that it defines the statute of limitations as a substantive rather than a procedural institution, as argued by INAPI, which means that the 2005 reform does not apply immediately to ongoing proceedings. Thus, the court reaffirms that the limitation period depends on the legal status governing the patent as a real right.
The ruling emphasizes that patents are real rights and, as such, are subject to the general statute of real rights provided for in Article 12 of the Law on Retroactive Effect of Laws. This provision establishes that any real right acquired under one law remains in force under another, but that with regard to its enjoyment, encumbrances, and extinction, the provisions of the new law prevail.
Thus, the Court affirmed that, in the case of the extinction of the right by means of the statute of limitations on the action for annulment, it is appropriate to apply the regulations in force at the time of its granting and not those in force at the time of filing the application. “Since the statute of limitations is being disputed in this case, we agree with the appellant that these are not procedural matters, such that the rule of Article 24 of the Law on Retroactive Effect of Laws should apply, to govern in actum,” it emphasized.
“The truth is that patents constitute a real right and, as such, Article 12 of the Retroactive Effect of Laws Act applies to them, which states: ‘Any real right acquired under a law and in accordance with it shall subsist under the rule of another; but with regard to their enjoyment and encumbrances and their extinction, the provisions of the new law shall prevail,’ all without prejudice to the substantive rules relating to the configuration and definition of the right itself, so much so that the same law, in Article 7, states: Mere expectations do not constitute a right,” emphasized the court.
This confirms that, in the case of patents applied for before the 2005 reforms, but which were granted after that date, the limitation period for invalidity proceedings will be five years from the date of registration (as provided for in Law No. 19,996) and not the ten-year period provided for in the original text of Law No. 19,039 in 1991, which was in force at the time the application was filed.
A second important aspect addressed in the ruling is the relationship between divisional patents and so-called “parent” patents. The court accepted the plaintiff’s argument that, because it was derived from a previous application filed under the original 1991 law, the divisional patent should be governed by the substantive rules of that legislation, including the ten-year limitation period.
In response, the ruling clearly establishes that divisional patents constitute autonomous inventions, distinct from the original application from which they derive, and that although the term of a divisional patent is governed by that of its parent patent, the very existence of the divisional patent, its grant, and its eventual invalidity are subject to their own independent regime.
Based on this analysis, the court concludes that the patent granted in September 2016 must be governed by the regulations in force at that time, i.e., Law No. 19,039, as amended, which establishes a five-year statute of limitations for nullity actions.
As the action was filed in November 2023, more than seven years had elapsed since the grant, which rendered the claim inadmissible because the action had expired. Consequently, the Industrial Property Court upheld the statute of limitations defense raised by the defendant and confirmed the dismissal of the case.
The ruling is particularly relevant in industrial property, as it reaffirms the substantive nature of the statute of limitations and the nature of the patent as a real right. It also clarifies the legal independence of divisional patents and establishes that, for patents applied for before 2005 but granted after that date, the decisive factor is the date of grant, not the date of application.
For more information on these topics, please contact our Intellectual and Industrial Property Group:
Eugenio Gormáz | Partner | egormaz@az.cl
Carlos Lazcano | Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Associate | frodriguez@az.cl
Esteban Orhanovic | Associate | eorhanovic@az.cl
Matías Selamé | Associate | matiasselame@az.cl
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