“An effective IP strategy must consider the business model, the feasibility of scaling, and regulatory barriers”

Loreto Bresky has been the national director of INAPI (Chile’s National Intellectual Property Institute) for two years now. We talked to her about INAPI’s main challenges and the issues the organization faced during the pandemic, as well as the implementation of the Madrid Protocol and other significant developments.

Posted Wednesday, November 17th 2021
“An effective IP strategy must consider the business model, the feasibility of scaling, and regulatory barriers”

Leaders League: What are the main issues for INAPI members? And what challenges did they face during the pandemic?

Loreto Bresky: The pandemic tested all user-care services in the world, like never before. There was a paradigm shift in the way people related to institutions. At INAPI we took this as an opportunity to develop a management model based on maintaining operational continuity, without losing sight of the surrounding conditions and the personal dimension.

In our case, the pandemic came on top of  the effects of the social unrest experienced in Chile during 2019 and early 2020, which actually resulted in the partial destruction of our institutional building. Therefore, it was necessary to design and execute a management plan with three fundamental building blocks: users, public employees of INAPI, and infrastructure.

To this end, we consolidated and strengthened our digital platform, which became the way in which practically 100% of the procedures we handled were carried out.

In addition, we reoriented our service-offer to connect with the new and evolving needs of the innovation and entrepreneurship ecosystem, with the aim of providing added value to small and medium-sized enterprises (SMEs) throughout the nation.

In tandem with this, we created an intensive program to meet the needs of our teams, not only in terms of technical infrastructure and results management, but also by providing psychological support and reflection sessions. This made it possible to stimulate a sense of belonging, maintain a two-way information process and adequately channel the ideas and concerns of INAPI employees.

The results have been more than encouraging. For example, in 2020 almost 60 thousand trademark applications were processed in Chile, which translates into an increase of 27% compared to the previous year. In this way, remote services were also triggered to resolve doubts and our digital systems were improved.

What would be your advice for international inventors looking to protect their intellectual property?

Intellectual property (IP) goes hand-in-hand technological development, therefore a consistent business strategy should be  implemented across the different markets.  An effective IP strategy must consider the business model, the feasibility of scaling, and regulatory barriers in the target markets, among other factors, so that it is aligned with the objectives to be achieved.

For example, when a protectable technology has been developed, the relevant priority markets should be analyzed, as should the technology pipeline and business model for each country. Then, based on the findings of the above exercise, an IP strategy should be formulated.

In the case where one seeks to protect development in several markets, I recommend using the PCT and the Madrid Protocol, because they facilitate processing and reduce some costs and times.

A comprehensive analysis of all these elements will facilitate the raising of capital by international investors and make technology transfer easier.

Can you tell us about the implementation of the Madrid Protocol and the main challenges it faces?

Currently, for Chilean users to reach international markets with their trademarks protected, they must make a seperate application in each of the countries of interest, , with all the cost ─ hiring people to make  presentations and translations etc. ─  that this involves;variables that constitute a real stumbling-block for thousands of Chilean companies and entrepreneurs, whose limited budgetsoften put other markets out of reach.

That is why the Madrid Protocol is a such great opportunity for Chileans, because it  will mean fewer barriers when it comes to positioning and registering their trademarks abroad.

It is a tremendous advance that we have waited for with great anticipation, because of the  the benefit to the national economy, and to those companies that voluntarily want to use this system, like export businesses.

According to WIPO, between 2010 and 2019, Chileans filed more than 32,000 trademark applications in 57 different countries. Therefore initiative has received the enthusiastic support of the export sector and the backing of the Ministry of Foreign Affairs.

In addition, the treaty has been incorporated into the national relaunch plan promoted by the Ministry of the Economy, as it facilitates the internationalization of Chilean SMEs. The Madrid System may see users being able to request their records centrally.Furthermore, at INAPI we are adapting methods and workflows, with internal and external training, in order to use the system easily.

Industrial property is an important tool for the development of entrepreneurship and innovation. What is INAPI doing to help innovators and entrepreneurs?

The innovation ecosystem is growing very fast, both in Chile and across the globe. Given this, IP has become a crucial element, because it is the intangible that allows capital to be raised, a factor that poses of the biggest problems to this type of company.

That is why at INAPI we focus on developing programs via which the industrial property obtained is of robust quality, thus enhancing success in technology transfer. The most recent of these is called "INAPI Running", which seeks to support national innovators at an early stage, by providing  mentoring and expert advice, in order to integrate the various dimensions of technological entrepreneurship, and by doing so  scale to international markets.

Additionally, we have unveiled the “INAPI plus Origin” contest, which is currently underway. This project aims to empower producers who have obtained the Seal of Origin, so that they can reach the next level.

Another initiative that we hope to launch within the next few months, is a new Center to Support SMEs, which will allow us to accompany innovators and entrepreneurs in Chile in a personalized way through advice, training and mentoring, which will be carried out through various digital and face-to-face media sessions.

For this, we have set aside a physical space in our offices, specially designed to support various actors in the national ecosystem, which will be a place not only to receive technical support, but also for networking.

Finally, I would like to highlight the Centers for Support to Technology and Innovation (CATIS) that are located in various parts of Chile and have the support of WIPO. We also have an annual programme of training and workshops whose objective is to reduce technical knowledge gaps and promote technology transfer and the strategic use of various IP rights.