Important amendments under Mexican law regarding patents, utility models and industrial designs

Mexico has recently put into effect a number of provisions regarding diverse IP issues that merit close attention. Kat friends Edith Rivero and Veronica Avilez of Dumont have summarized these developments for IPKat readers.

Amendments to the Mexican Industrial Property Law involving patents, utility models and industrial designs came into force on April 27, 2018. The amendments are directed to attempting to fix certain perceived shortcomings related to lack of information to third parties, the prosecution time for a patent application, and the system for prosecution and maintenance of industrial designs. A brief discussion of these amendments is provided below.

Amendments related to availability of information

Publication of patent applications has been limited to bibliographic data and the abstract of the invention. Utility model and industrial design applications, as well as divisional applications of any type, have not been published until grant. This limited information led to uncertainties regarding important aspects of the application process. For example, third parties were unable to know when an application was abandoned, withdrawn, rejected, or simply pending longer than usual. Applicants had, and still have, no obligation to provide notice of the filing of a divisional application in parent cases. Thus, even if complete files for granted parent cases have been accessible by third parties, in certain circumstances, such as pharma-related patents, it was not totally clear whether a further divisional application covering relevant matter was filed before grant of the parent case. Against this backdrop, these amendments bring the Mexican system in line with leading jurisdictions on this matter.

An amendment directed to optimize the prosecution time of patent applications

This amendment relates to third party observations, which can be submitted by any person against the patentability of an application within a fixed term after a patent application has been published. The term, within which the examination cannot start, has been reduced from six to two months. According to official information, only 0.173% of patent applications filed between 2011 and 2017 attracted third party observations, but all applications (approximately 82,000 in total) were delayed for six months to wait for the statutory time to expire before proceeding to examination. The amendment directly addresses this matter, allowing, at least in principle, for reduced patent prosecution times.

New concepts for industrial design examination

Novelty for industrial designs is now defined in terms of “independent creation” requiring that a design must be different to a “significant degree” from already known designs or a combination of features of known designs; both of these concepts are new to Mexican IP law, having been adopted from the European system. Still, while the addition of the concepts is meant to impact on examination and litigation, the Patent Office has indicated that, for the time being, it will not significantly change the methodology for assessing novelty of industrial designs.

If this transpires, Mexico might lose an opportunity to update the substantive grounds for granting and enforcing industrial designs, which changes are not only desirable to improve the system but are required by the amendment. Nonetheless, the mere existence of the possibility for such changes is seen as positive, since they will rest more on a change to the criteria for examination than on a further amendment to the law (given the relatively long time it takes for the latter).

Industrial design applications should now indicate the product to which the design is intended to be applied, instead of just indicating the type of products, as was previously the case. On the one hand, this provision has the potential for limiting the scope of protection of industrial designs granted under the new provision. On the other hand, it might bring more certainty to third parties, specially to players in the same industry.

New regime for the validity of designs

The term of protection of industrial design registrations has been modified from a non-extendable 15-year term to a renewable 5-year term. Renewals will be available by subsequent five-year periods up to a maximum of 25 years. Pending industrial designs as well as already-granted industrial designs will be able to benefit from this change to the renewal system. Annuities for registrations in force are to be paid for the remainder of the applicable 15-year term under the current rules, generally, a quinquennium (five-year) system. Industrial design registration renewals will be published by the Patent Office, creating the necessary certainty for third parties.

This new system is particularly advantageous for owners, not so much because of the renewal system itself, which will not materially impact on the way maintenance will be handled, but because of the possibility of extending the term of protection. As with any renewal, owners will be able to choose which designs are worth spending on to extend the term of protection time, and which should be left to fall into the public domain. Practitioners and stakeholders of the Mexican IP system have been clamoring for a complete remake of the laws and regulations governing patents, utility models and industrial designs. While these amendments do not completely satisfy these expectations, most of these provisions seem to be directed to improving the system.

Photo by Sémhur and is licensed under the Creative Commons Attribution-Share Alike 4.0 International, 3.0 Unported, 2.5 Generic, 2.0 Generic and 1.0 Generic license.