New Mexican IP Law
“New Federal Law for the Protection of Industrial Property in Mexico comes into force on 5 November 2020”
During the last 20 years Mexico has been one of the most dynamic countries in Latin America. Even considering the recession of 2008, the Mexican economy has had a remarkable macroeconomic stability, this situation, along with the increase of the per capita income, makes it an appealing territory for investors in the search of new markets.
Considering our own clients’ Industrial Property portfolios, we have noticed an increasing interest for Mexico, that is very frequently the clients’ gate to Latin America.
Mexico’s 1991 Industrial Property Law has been in force for 29 years and has not undergone any great changes, but it has recently been withdrawn to give way to the Federal Law on the Protection of Industrial Property in order to harmonise and adapt the regulatory framework with the implementation of the T-MEC (Treaty between Mexico, United States and Canada).
The new Mexican IP Law, published on July 1, 2020, will come into force on November 5, 2020. This new law modifies in some cases, and clarifies in others, some aspects of the current legislation which may not be entirely clear and also introduces a number of noteworthy changes that we briefly discuss below.
The “Bolar Clause” premise is introduced, so that a third party may use, manufacture, offer for sale or import a product with a currently registered patent, in order to carry out tests, generate information and produce in an experimental way with the aim of obtaining medical records of medicines for the purpose of marketing them when the patent expires. This applies from the filing of the patent application and throughout the whole time the patent is in force
A patent shall not be granted in relation to subject matter which is already protected by another patent or the essential technical characteristics of which are a non-substantial variation of the subject matter covered by the patent, even if the applicant is the holder of the first one.
The supplementary certificate is established to adjust the validity of the patent for cases where the procedure for granting a patent exceeds 5 years from the date of filing, whereby this is directly attributable to the Institute due to unreasonable delays. Within the 5-year period, no account shall be taken of the time taken to resolve the examination of form; the actions or omissions of the applicant tending to delay the procedure or those beyond the control of the Institute; and the periods attributable to acts of God or force majeure. The application for a certificate must be made at the time of payment of the final fees for the grant of the patent and may be requested only once.
It should be pointed out that Mexico has signed several agreements in order to speed up their patent prosecution system through the Accelerated Patent Program (PPH), up to August 2020 they had signed agreements with Austria, Canada, China, EPO, Korea, Japan, Singapore, Spain, Portugal, the United States of America and the Pacific Alliance, applying through this way the patent prosecution timeframe may be reduced approximately in one year in what regards to an application that cannot benefit from this tool.
It is clarified that the declaration of use for the third year will only apply in relation to trademarks granted after 10 August 2018. The coverage of the products/services of the trademark will remain only for those whose use has been declared.
The effectiveness of trademarks, trade names and commercial names will be counted from the date of registration (granting). This provision shall apply only in regard to trademarks granted after 5 November 2020.
A longer protection period for utility models from 10 to 15 years.
The concept of trade secret is defined, and it is included as an offence to appropriate, acquire, use or disclose a trade secret by any means with the purpose of causing damage or obtaining an economic benefit for oneself or for a third party.
Additionally to the the opportunities that the new law offers to improve the scope of our client’s IP rights and projects, it is worth to point out the efforts of the IMPI has been maintaining in order to offer better services including e-filing and simplifying the documentation required to apply and maintain registers.