Chile

An economic slowdown may be to blame for the dip in patent filings in Chile over the last year. The historically resilient mining and aquaculture sectors have seen a noticeable decline in numbers, as has the pharmaceuticals industry. However, the outlook for international applications remains positive: the country is still reaping the benefits of its 2014 appointment as an international search authority under the Patent Cooperation Treaty, which has gone some way towards establishing Chile as a gateway to the rest of Latin America for global inventors and rights holders. This development was reinforced by the Patent Prosecution Highway agreement between Chile and the other members of the Pacific Alliance – Mexico, Colombia and Peru – which came into force in the middle of last year. Now a regional hub of expedited prosecution, commentators are hopeful for the future of the Chilean IP market.

Firms

1
Carey
Sargent & Krahn
2
Albagli Zaliasnik SpA
Alessandri & Compañia
Estudio Villaseca
Johansson & Langlois
Silva & Cia
3
Baker McKenzie Chile
Beuchat, Barros & Pfenniger
Clarke Modet & Co
Claro y Cia
Porzio, Rios & Associates
Albagli Zaliasnik SpA

Bolstered by an imposing contentious division and with a nuanced appreciation of the pharmaceuticals industry, Albagli Zaliasnik’s IP team is “particularly strong in litigation and at defending generics manufacturers”. Alongside work for leading drugs companies – including the recent defence of Laboratorios Recalcine's rights in a critical infringement suit – the set has made a name for itself in the mining world, especially since providing vital assistance to the inventor of the Fénix capsule, which was used during the rescue procedure in the 2010 Copiapó mining accident. The firm has more recently been battling a cancellation action filed by CODELCO to annul the patent for the Fénix capsule. Spearheading this operation is Eugenio Gormáz, who wins plaudits for his outstanding client service: “He explains precise technical elements in a simple manner; but far from making it feel like cold and impersonal legal advice, he treats you as an important individual – this means you always feel protected and at ease.” A life sciences aficionado Ariela Agosin also excels in competition and advertising law. “Agosin and her team are fantastic. They follow up on instructions very well and provide an excellent overall service.”

Alessandri & Compañia
“One of the best law firms in the country”, Alessandri is “an important name in the patent field”. “Strong in multiple areas of commercial law and with intellectual property as one of its main arms, its offering is comprehensive. Its IP and corporate sectors meld together very organically.” With “a great network of foreign associates around the world and efficient systems in place that enable timely results”, the firm is a prime choice for global inventors. Newly designated managing partner Rodrigo Velasco Alessandri oversees all IP mandates. “He possesses broad knowledge of different local practices and knows all about international law”; these talents have lately been put to good use for Honeycombs Graphics, which required a sophisticated cross-border patenting strategy in the burgeoning 3D printing industry. The “superb” Francesca Rodríguez contributed to this venture, as well as many others. A perennial client favourite, she is “exceptionally organised and has a great memory” – crucial traits given the substantial number of important patrons knocking at her door, including the University of Chile. “She is efficient and persistent and pays close attention to detail. Moreover, she is technically and legally competent and writes in a compelling, convincing manner.” Rounding off the troop is patent director Jaime Silva Barros, who “has deep awareness of the many variables that may affect the application process and also offers valuable advice concerning future commercial options that may arise.” He effortlessly enhances portfolios through smart technology transfer and licensing deals.
Baker McKenzie Chile
The Chilean contingent of Baker McKenzie is keenly attuned to the needs of local inventors. With abundant international resources on tap, it is an equally able running mate for cross-continental clients – for example, it has recently been assisting Baxter in the transfer of its portfolio during the establishment of spin-off bio-pharmaceuticals company Baxalta. Proficient at all levels of prosecution and drafting, the specialised, cost-efficient patent squad has been particularly busy in the mining and fish farming industries. Those looking for insightful advice would do well to seek out Valentina Venturelli.
Beuchat, Barros & Pfenniger
Boasting over half a century’s worth of experience, Beuchat, Barros & Pfenniger is “a traditional firm full of capable patent practitioners”. “A significant filer on the market”, its “strong patent department” houses a “superb prosecution practice”, which is dedicated to saving clients both time and money. Its ample team of legal and scientific experts impresses at every turn, but performs most spectacularly in the chemical, electronics and mechanical sectors. The star player is Andres Melossi Jimenez, “an excellent lawyer who has handled a number of key litigation cases”.
Carey
Home to over 230 professionals, Carey is Chile’s largest law firm and “one of the premier outfits in Latin America”. “A major patent filer”, it is “a top choice for everything – be that prosecution, enforcement, transactions or full-blown litigation”. Leaving no stone unturned, the set also has sparkling corporate and regulatory credentials, making it a trusted ally to some of the country’s most esteemed enterprises. The “global approach” adopted by its cosmopolitan practitioners resonates with international clients. As one avers: “It is my go-to partner in Chile; but even when considering all the foreign offices I have worked with around the world, it ranks among the highest in quality.” Mechanics and electronics mandates are the firm’s bread and butter, but it also continues to see a flurry of activity in pharmaceuticals, with industry leaders such as Boehringer Ingelheim relying on its wise counsel. Life sciences dynamo Fernando García is responsible for this partnership. “He has extensive IP experience and handles a large volume of contentious work”, but is also a savvy dealmaker. Head of the life sciences group Guillermo Carey is another tough enforcer of rights and a shrewd negotiator of technology transfer deals. “A very fine attorney”, Francisco Carey is “responsive and sophisticated” and performs adroitly across the board. Of late, he has been busy dealing with patent issues for Nestlé and BASF.
Clarke Modet & Co
Clarke Modet & Co has an enviable global footprint, with a sprawling network of offices across 10 countries, including many Latin American nations. This reach – in addition to its wide-ranging technical skill and rich resources – makes the firm a regional powerhouse and a safe bet for international patent owners of all stripes. Its Chilean branch “has a solid prosecution practice with impressive filing numbers” and assuredly guides both local and foreign clients through uncharted waters.
Claro y Cia
Practising for over 130 years, respected stalwart Claro y Cia upholds the highest standards and draws on vast reservoirs of experience; its IP team has a panoramic perspective and a reputation for crafting high-grade, client-oriented solutions. Its practitioners work in perfect sync with the firm’s corporate divisions to dispense intelligent, joined-up advice that gets to the heart of any commercial conundrum. Presiding over the IP group is the versatile Felipe Claro. His prestige in the market culminated in a two-year stint as president of the International Association for the Protection of Intellectual Property – a role in which he was “terrific”.
Estudio Villaseca
Estudio Villaseca is “one of the best Chilean firms for patent work”. Having recently celebrated its centenary, the revered boutique showcases boundless legal and technical knowledge. Its “experienced group of high-quality young lawyers supplies the necessary vigour and energy” to deliver flawless results. The “top-of-class team” operates at the vanguard of innovation, serving a range of scientific and local institutions, including respected universities. Meanwhile, a separate corporate division carves through complex transactions with ease. The lead patent actor is Eduardo Molina, a sharp engineer who excels in drafting applications. His clientele features everything from domestic enterprises to global heavyweights such as Apple. The illustrious Sergio Amenábar oversees all matters and applies almost five decades’ worth of IP wisdom to great effect. “A one-of-a-kind practitioner and very smart, he takes a systematic approach to every problem and has access to a valuable international network.”
Johansson & Langlois
“An excellent option for patent work”, Johansson & Langlois is “a prolific filer” and “one of the best for prosecution”. The outfit is famed for its tailored, client-centric approach, which translates into customised counsel for all problems. Although its multi-disciplinary team is adept in an array of technical fields, it “has a particularly strong focus on the mechanical domain”. This is Marcela Ramírez’s forte: she has rare insight into the inner workings of the examination process, having trained at the European Patent Office and worked as a Chilean patent office examiner. Likewise, Felipe Langlois is recommended for his engineering and prosecution nous.
Porzio, Rios & Associates
A valued partner to a diverse spectrum of IP owners, Porzio, Rios & Associates is well versed in the intricacies of patent law. Its seasoned professionals are a force to be reckoned with in both prosecution and litigation, and their varied international backgrounds are reflected in their formidable linguistic capabilities. This is epitomised by “highly regarded senior statesman” Marino Porzio, who is comfortable conversing in Spanish, English, French, Italian and Portuguese. The former World Intellectual Property Organisation deputy director is an iconic figure on the national IP scene.
Sargent & Krahn
“Clearly one of the biggest and most significant players in the market”, Sargent & Krahn provides a prodigious service in all disciplines – big-name drugs manufacturers are its main customers. Its “extensive prosecution experience and response times are fantastic”. The firm’s pre-eminent patent practice also executes impeccably on contentious instructions, largely due to the presence of the “very professional and technically proficient” Juan Pablo Egaña, who is “smart and always present in the courtroom”. “An incredibly well-known name”, “he is one of the most experienced patent attorneys in Chile” and a master of both prosecution and litigation, especially in the life sciences space. Although more than proficient in filing and drafting, Cristian Barros' niche is patent litigation; he has been a driving force in many of the firm’s most critical cases. With a profound understanding of Chilean and US law, “he is a relatively young lawyer with knowledge beyond his years”.
Silva & Cia
Dominating the local IP scene, Silva & Cia files more domestic patents than any other firm and is “deeply involved with universities and home-grown inventors”. As a result, this astute outfit has garnered an unparalleled level of know-how on myriad cutting-edge issues, from stem cells to cancer drug research. It is equally capable on the international stage and regularly acts on behalf of heavyweight clients such as ExxonMobil and Gilead. These fall under the care of Rodrigo León, who leads the patent department. “León and his team provide excellent advice and a premium service. He is honest and rapid in his responses and offers solutions that are focused on corporate realities.” Knowledgeable in trademarks and patents, and in touch with commercial concerns, Francisco Silva handles IP-related transactions with consummate ease.

Luminaries

Sergio Amenábar V - Estudio Villaseca
Marino Porzio - Porzio, Rios & Associates

Individuals

Ariela Agosin - Albagli Zaliasnik SpA
Francisco Carey - Carey
Felipe Claro - Claro y Cia
Juan Pablo Egaña - Sargent & Krahn
Felipe Langlois - Johansson & Langlois
Rodrigo Velasco Alessandri - Alessandri & Compañia
Cristian Barros - Sargent & Krahn
Guillermo Carey - Carey
Fernando García - Carey
Eugenio Gormáz - Albagli Zaliasnik SpA
Allan Jarry - JarryIP
Rodrigo León - Silva & Cia
Andres Melossi Jimenez - Beuchat, Barros & Pfenniger
Eduardo Molina V - Estudio Villaseca
Marcela Ramírez - Johansson & Langlois
Juan Francisco Reyes - SCR Abogados
Francesca Rodríguez S - Alessandri & Compañia
Francisco Silva - Silva & Cia
Jaime Silva Barros - Alessandri & Compañia
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Issue 84