Sargent & Krahn

Managing Partner: Carlos Pérez-Cotapos

Number of partners: 27

Number of other lawyers: 89

Contacts

Trademarks: Juan Pablo Egaña, Cristián Barros, Pablo Cariola.

Patents, Industrial Designs and Utility Models – PCT: Juan Pablo Egaña, Cristián Barros.

Life Sciences, Pharmaceutical Law and Protection of Undisclosed Data: Juan Pablo Egaña, Cristián Barros.

Litigation, Arbitration, and Infringements: Eduardo Lobos, Pablo Cariola.

Copyrights: Cristián Barros.

Data Protection – Technology, Privacy, and Media: Carolina Flisfisch.

Domain Names & Internet: Cristián Barros, Pablo Cariola.

Unfair Competition, Advertising (CONAR) and Consumer Protection: Juan Cristóbal Gumucio, Eduardo Lobos.

Trade Secrets, R&D and Tax: Juan Pablo Egaña, Eduardo Lobos, Javier Cerón.

Geographical Indications & Designations of Origin: Eduardo Lobos, Pablo Cariola.

Plant Breeder’s Rights: Juan Pablo Egaña, Cristián Barros.

Firm Overview:

Sargent & Krahn,a law firm specialized in intellectual property, with more than 135 years of experience, which makes us one of the law firms with the most extensive practice and leadership in the Chilean market. This is supported by our diverse client database and several international awards that have recognized us as one of the best law firms in Chile. Sargent & Krahn is the sister company of the general law practice firm Cariola Díez Pérez-Cotapos which has over 110 attorneys, including the ones that perform their activities in the IP field for Sargent & Krahn.

We develop technological tools that we put at the service of our clients, such as ourWEEKMARKplatform, an online portal that efficiently provides relevant information on intellectual property.

Trademarks:

In the area of trademarks we advise local and international clients of all sizes in the registration of trademarks in Chile, providing the necessary support regarding the areas to be protected, as well as the description of the products and services covered.In addition,we have an extensive network of international correspondents that allows us to assist our clients with the registration of their trademarks abroad.

• • Proprietary database with all updated trademark information:resultsandregistrationsuggestionsin a timely manner and within short deadlines.
  • Experience in negotiatinganddraftinglicensingagreementsrelated tointangibleassetsandadvice: maximizing economic returns.
  • Team specialized in the judicial defense of intellectual and industrial property rights.

Patents, Industrial Designs and Utility Models – PCT:

We also provide advice on all contractual matters related to the technologies protected by such patents, industrial designs and utility models. Likewise, through our network of correspondents, we are in a privileged position to provide advice on the exploitation of our clients’ inventions, not only in Chile, but also worldwide.

Our team is composed of two partners and a team of associate attorneys specialized in patent, industrial design and utility model matters.

In addition, we have a permanent team of highly qualified experts, all with a minimum of 10 years of experience in the field, which allows us to provide a timely and specialized service for the different innovation intensive industries, such as pharmaceuticals, mining, forestry, food, veterinary, agriculture and livestock, among many others.

Our office has a litigation team specialized in Industrial Property, so our clients receive a complete and integrated advice regarding their patents, industrial designs and utility models.

PCT

The PCT is in force in Chile since June 2nd, 2009 and is routinely used by national applicants due to the evident advantage that it provides to plan and implement global patent strategies. After a PCT application is filed, the applicant has 30 months to make a decision regarding the countries in which it will continue with the patent process.

During this term, the applicant can analyze the possible commercial success of the invention and, taking advantage of the international search report and written opinion that the PCT process provides, obtain a clear idea regarding the real possibilities that the patent application will be accepted for registration.

Our office also provides advice in the drafting (request, specification and claims), filing and prosecuting of PCT applications in the International phase before the National Institute of Industrial Property (INAPI) or the International Office. We also have a network of international correspondents that can represent our clients before the designated offices during the corresponding national phase.

Copyrights:

We advise our clients in relation to the protection of their copyright (and related rights) by evaluating together the most convenient way to ensure the protection of those rights, but also to exploit them effectively through different contractual forms such as licensing or cession.

Unfair Competition, Advertising (CONAR) and Consumer Protection:

There is a close relationship between intellectual and industrial property, unfair competition and consumer protection.

The reality of communications and marketing shows that actors from different industries are taking new actions to advertise their products and services, in a world where consumers are increasingly aware of their rights and obligations.

In this context, we advise our clients, for instance, in the review of advertising campaigns prior to their launch, the preparation of terms and conditions of offers and promotions, the analysis of complaints made in the context of consumer relations, among others.

Additionally, our advice includes the defense before the competent authorities and self-regulatory entities, such as the Council of Self-Regulation and Advertising Ethics.

Finally, our services include representation in lawsuits for infringement of consumer protection rules, unfair competition, as well as in claims for possible violations of advertising ethics and advertising abuses.

Domain Names & Internet:

At Sargent & Krahn we are constantly going one step further, always providing personalized service, visualizing potential needs and connecting with our clients’ every requirement.

Our visionary purpose has driven us to go from the surveillance of new domain names to face this challenge with global surveillance of domains. This expansion in coverage is due to be able to provide a comprehensive look at the potential threats in terms of cybersecurity. Thus, by identifying the risk, it can be mitigated before it impacts with dire consequences, both the value proposition and the business of each of our clients.

This service consists of:

1. 1. Receive our supportto locate names identical or very similar to the brand or domain name under surveillance. We keep you up to date and fully informed of the misspelled variants of the domain names which could be a threat. This information that we send on a weekly basis allows you to quickly evaluate the risks or to be informed about the legal actions to be taken to defend your bran assets.
   2. Receive alertswhen a monitored name registers as a new Gtld so you can take quick action to protect your brand reputation and effectively manage the risk of online breaches, cybersquatting or other threats.
   3. Provide informationthat becomes a useful and effective tool to monitor the activities of your competitors.

Plant Breeder’s Rights:

We file and prosecute the registration of PBR for local and foreign clients in Chile. We include the applications in our surveillance system to inform our clients of the payment of annual and maintenance fees and if required we can handle the payment process before SAG (Chilean Agricultural Service).

As in the case of patents, we also have a network of international correspondents that allow us to counsel our clients regarding the registration of their PBR in foreign countries. We can also advise our clients in regard to the negotiation of license agreements and the enforcement of their rights.

Geographical Indications & Designations of Origin:

We file, prosecute and defend geographical indications and designations of origin applications for local and international clients in Chile.

We advise our clients regarding the drafting of the internal regulations for the use of geographical indications and designations of origin, considering the specific needs of the product and market requirements.

Litigation, Arbitration, and Infringements:

Our services include the protection of the Intellectual and Industrial Property rights of our clients through the exercise of actions in administrative, arbitral or judicial venues.

In this sense, the intellectual and industrial property rules are based on exclusive and excluding rights whose infringement entitles their holders to exercise actions in administrative and ordinary headquarters. Thus, we have a team specialized in litigation of this nature that represents our clients in opposition and trademark nullity trials before the National Institute of Industrial Property, Industrial Property Court Supreme Court, as well as in civil, criminal and unfair competition actions before ordinary courts.

In accordance with our work structure, each client is assigned a litigation attorney with an integral knowledge of their intellectual and industrial property assets, which allows us to evaluate the most adequate protection alternatives for each particular case.

In addition, we have an area specialized in crimes against Industrial and Intellectual Property, with great experience in matters referred to Border Measures before the National Customs Service, as well as in the prosecution of piracy within the national territory, thanks to the close relationship we have with the Police and the Public Ministry. In this same sense, we have also specialized in the creation of preventive strategies that include training and coaching in the detection of infringing products.

We are also supported by a solid team of eleven paralegals, whose timely and effective work allows for the proper processing of the various administrative, civil and criminal cases entrusted to us.

Data Protection – Technology, Privacy, and Media:

Our firm permanently advises national clients and several of the world’s largest technology companies on legal issues related to information technology, telecommunications and data protection.

We have a unique niche of highly specialized lawyers with a deep knowledge in technology, including internet, electronic signature, software and licensing, databases, SaaS and cloud computing, cryptography and computer security, among others.

This has allowed our team to participate in some of the most important technology and telecommunications infrastructure projects in Chile, as well as in large transactions on content exploitation rights in different media and platforms.

With respect to privacy and data protection, we offer comprehensive services ranging from the preparation and review of policies, adaptation of processes in companies required by the General Data Protection Regulation of the European Union, audits on regulatory compliance, processing of commercial information and credit scores, to the conduct of inventories and records of data activities.

We are proud to have among our clients several technology startups and our firm is also part of the Startup Chile Corporate Network.

Finally, the Technology, Privacy and Media group has been designed and trained to work collaboratively and

efficiently with other practice areas of our firm, highlighting the successful performance in litigation with IT components.

International Work:

Sargent & Krahn, through an extensive international network of firms, represents Chilean and foreign clients in connection with IP and IT matters in more than 70 countries, with specific focus in trademark filings and prosecution in foreign jurisdictions.

Clients:

Clients of the firm are from all major industrial sectors and from several countries of the world. A list of representative clients is provided upon request.