The Mexican Patent Office, an agency formerly under the control of the Ministry of Commerce and Industrial Development, has been replaced by an independent administrative agency named the Mexican Institute of Industrial Property, with a view to increasing efficiency in the processing of intellectual property matters. The Institute has been granted broader powers in the enforcement of intellectual property rights and will set its own fees.
The principal changes introduced by the amendments are set forth below.
Patents and Designs
Two dates must be considered in connection with the new law. First, for all applications filed prior to October 1, 1994 on which examination was not requested under one of the preceding laws, examination must be requested by March 1, 1995. Second, within 60 days from the new law coming into effect (a date variously estimated as somewhere between December 17, 1994 and January 15, 1995 depending on various estimates as to how many vacation days the Institute will take between now and the end of the year), applicants must choose whether they wish to have the old law or new law apply to applications filed before October 1, 1994. If applicants wish cases that were already on file by October 1, 1994, to be governed by the new law, it is necessary to pay a fee and petition for this. As will be seen by the following discussions of the changes effected by the new law, it is not possible to give any general advice as to whether the old or new law is to be preferred since this depends upon the circumstances of a particular case. However, it is clear that for patent applications for process inventions on which priority was claimed, the new law gives increased rights and that for designs, the old law is more favorable with respect to possible novelty bars.The major changes effected under the new law are as follows:
1) For designs a world-wide novelty standard as opposed to novelty within
Mexico is now to be applied.
2) The new law retains a one-year grace period in respect of publications originating from the inventor that occur prior to either the date of filing in Mexico or the priority date, where claimed. However, the new law now specifically excludes from the types of publications that are deemed to originate from the inventor, any published patent or patent application issued by a foreign patent office.
3) With effect from the date on which the new law relating to plant varieties comes into effect (expected to be some time in December) plant varieties will cease to be patentable. However, the previous prohibition on patent protection for plant or animal species has been removed although the prohibition on animal breeds remains.
4) A further prohibition introduced by the new law concerns the patentability of mathematical methods. The law has also been modified in connection with new uses of known inventions or products to make it clear that such uses are patentable only if not obvious to an expert in the subject.
5) The new law abolishes the possibility of a three-year extension of term for pharmaceutical chemicals or pharmaceutical products or processes for producing such products and now fixes the term of a patent as 20 years from the filing date for all categories of subject matter. It will, however, be recalled that the previous possibility of a three-year extension was confined to situations where the patentee was prepared to grant an automatic license to any Mexican-owned corporation, which provision may well be regarded as being discriminatory under the terms of the NAFTA and TRIPS agreements.
6) Under the new law, the rights granted by a patent are extended somewhat to cover both the sale in Mexico and the importation into Mexico of products directly obtained by a patented process.
7) The protectible characteristics of industrial designs have now been modified to make it clear that design protection does not extend to any elements that are dictated solely due to considerations of technical requirements or by the realization of a technical function unless these incorporate an arbitrary contribution from the designer. Nor does the protection conferred by design extend to any elements or characteristics of production that would be necessary to allow the product incorporating the design to be mechanically mounted on or connected with another product with which the part in question is intended to perform an integral part, other than units that are intended to be incorporated into a modular system (i.e. the new Mexican law contains a "must fit" exception similar to that appearing in recent European statutes).
8) For applications filed after October 1, 1994, examination will now be automatic on filing and the filing charge will include a fee for requesting examination.
9) In the case of applications relating to biological material, if the specification itself does not describe the material adequately, the application must be complemented by proof of deposit of the biological material in an institution approved by the Mexican authorities. So far we have no list of such institutions but probably international depository authorities that qualify under the Budapest Treaty will suffice.
10) Provision is now made that in nullity actions an order may be made that only certain of the claims are invalid and that the patent may be maintained with only some of its original claims. Furthermore, the previous requirement that a nullity action could only be brought within the first 5 years of the grant of a patent has been abolished except for situations where the action is based on an allegation of abandonment during prosecution or on the ground that the patent grant was caused "by serious error or inadvertence" or that the patent was granted to someone who did not have a right to it.
2) The new law retains a one-year grace period in respect of publications originating from the inventor that occur prior to either the date of filing in Mexico or the priority date, where claimed. However, the new law now specifically excludes from the types of publications that are deemed to originate from the inventor, any published patent or patent application issued by a foreign patent office.
3) With effect from the date on which the new law relating to plant varieties comes into effect (expected to be some time in December) plant varieties will cease to be patentable. However, the previous prohibition on patent protection for plant or animal species has been removed although the prohibition on animal breeds remains.
4) A further prohibition introduced by the new law concerns the patentability of mathematical methods. The law has also been modified in connection with new uses of known inventions or products to make it clear that such uses are patentable only if not obvious to an expert in the subject.
5) The new law abolishes the possibility of a three-year extension of term for pharmaceutical chemicals or pharmaceutical products or processes for producing such products and now fixes the term of a patent as 20 years from the filing date for all categories of subject matter. It will, however, be recalled that the previous possibility of a three-year extension was confined to situations where the patentee was prepared to grant an automatic license to any Mexican-owned corporation, which provision may well be regarded as being discriminatory under the terms of the NAFTA and TRIPS agreements.
6) Under the new law, the rights granted by a patent are extended somewhat to cover both the sale in Mexico and the importation into Mexico of products directly obtained by a patented process.
7) The protectible characteristics of industrial designs have now been modified to make it clear that design protection does not extend to any elements that are dictated solely due to considerations of technical requirements or by the realization of a technical function unless these incorporate an arbitrary contribution from the designer. Nor does the protection conferred by design extend to any elements or characteristics of production that would be necessary to allow the product incorporating the design to be mechanically mounted on or connected with another product with which the part in question is intended to perform an integral part, other than units that are intended to be incorporated into a modular system (i.e. the new Mexican law contains a "must fit" exception similar to that appearing in recent European statutes).
8) For applications filed after October 1, 1994, examination will now be automatic on filing and the filing charge will include a fee for requesting examination.
9) In the case of applications relating to biological material, if the specification itself does not describe the material adequately, the application must be complemented by proof of deposit of the biological material in an institution approved by the Mexican authorities. So far we have no list of such institutions but probably international depository authorities that qualify under the Budapest Treaty will suffice.
10) Provision is now made that in nullity actions an order may be made that only certain of the claims are invalid and that the patent may be maintained with only some of its original claims. Furthermore, the previous requirement that a nullity action could only be brought within the first 5 years of the grant of a patent has been abolished except for situations where the action is based on an allegation of abandonment during prosecution or on the ground that the patent grant was caused "by serious error or inadvertence" or that the patent was granted to someone who did not have a right to it.
Finally, outside the realm of patents and trademarks, the law relating to trade secrets has been modified so as to clarify the obligations on government entities to whom data is disclosed during applications for permission to market pharmaceutical or agrochemical products to make it clear that such data is to be maintained confidential as a trade secret.
As well as enacting the new code, Mexico has deposited its instrument of accession to PCT which will become effective for Mexico on January 1, 1995.
Trademarks
1) The definition of a well-known mark which may prevent the registration of a
confusingly similar mark has been broadened to include marks which are
well-known by the relevant commercial sector in Mexico as a result of use
either in or outside of Mexico.
2) The period of time within which the prior user of a mark may bring cancellation proceedings against a registration for a confusingly similar mark has been increased from 1 to 3 years following publication of the conflicting registration. In addition, the definition of prior use now includes use either in or outside of Mexico, thereby significantly broadening the rights of foreign trademark owners.
3) The parallel importation of genuine goods into Mexico is permitted, thereby preventing trademark owners from controlling the further distribution or sale of their genuine products which they, or their authorized parties, have introduced into commerce.
4) Marks may no longer be registered in respect of all goods or services in a particular class, but must now be registered in respect of specific goods and services. Existing registrations with specifications of goods or services which are overly broad must be amended at the time of renewal.
5) There has been no change in the requirement that a trademark must be in use for at least 3 years prior to the renewal of the registration in order for such renewal to be granted; however, a new provision has been added whereby a renewal will now be granted where there has been no use, provided there are justified reasons for non-use.
6) In the declaration of use required upon renewal of a trademark registration it is sufficient to state that the registered mark has been used in respect of at least one item contained in the specification of goods or services.
7) It is no longer possible to attack a trademark registration on the ground that the Power of Attorney filed in support of the original application was defective.
8) Powers of Attorney filed in support of trademark applications and renewal applications need no longer be legalized, although Powers to support enforcement actions still require legalization.
9) The Institute has been empowered to effect preliminary measures, such as the seizure of infringing articles and the equipment and materials used to produce them, the closure of infringing establishments and the issuance of administrative declarations of infringement.
10) Trademark owners must use the marking legends "Marca Registrada", "M.R." orreg. on their products that bear a registered mark in order to be able to bring an action for infringement.
11) Many offenses which were previously classified as criminal offenses are now classified as administrative offenses, with the expectation that recourse before the Institute will be more effective than recourse before the Federal Prosecutor's Office.
12) The section of the 1991 Law, which continued the so-called "linking requirement", whereby a Mexican licensee using a mark of foreign origin could at his option link the foreign mark to one originally registered in Mexico, has finally been repealed.
13) The recordal of liens is now expressly recognized and their recordal is necessary in order for them to be enforceable against third parties.
2) The period of time within which the prior user of a mark may bring cancellation proceedings against a registration for a confusingly similar mark has been increased from 1 to 3 years following publication of the conflicting registration. In addition, the definition of prior use now includes use either in or outside of Mexico, thereby significantly broadening the rights of foreign trademark owners.
3) The parallel importation of genuine goods into Mexico is permitted, thereby preventing trademark owners from controlling the further distribution or sale of their genuine products which they, or their authorized parties, have introduced into commerce.
4) Marks may no longer be registered in respect of all goods or services in a particular class, but must now be registered in respect of specific goods and services. Existing registrations with specifications of goods or services which are overly broad must be amended at the time of renewal.
5) There has been no change in the requirement that a trademark must be in use for at least 3 years prior to the renewal of the registration in order for such renewal to be granted; however, a new provision has been added whereby a renewal will now be granted where there has been no use, provided there are justified reasons for non-use.
6) In the declaration of use required upon renewal of a trademark registration it is sufficient to state that the registered mark has been used in respect of at least one item contained in the specification of goods or services.
7) It is no longer possible to attack a trademark registration on the ground that the Power of Attorney filed in support of the original application was defective.
8) Powers of Attorney filed in support of trademark applications and renewal applications need no longer be legalized, although Powers to support enforcement actions still require legalization.
9) The Institute has been empowered to effect preliminary measures, such as the seizure of infringing articles and the equipment and materials used to produce them, the closure of infringing establishments and the issuance of administrative declarations of infringement.
10) Trademark owners must use the marking legends "Marca Registrada", "M.R." orreg. on their products that bear a registered mark in order to be able to bring an action for infringement.
11) Many offenses which were previously classified as criminal offenses are now classified as administrative offenses, with the expectation that recourse before the Institute will be more effective than recourse before the Federal Prosecutor's Office.
12) The section of the 1991 Law, which continued the so-called "linking requirement", whereby a Mexican licensee using a mark of foreign origin could at his option link the foreign mark to one originally registered in Mexico, has finally been repealed.
13) The recordal of liens is now expressly recognized and their recordal is necessary in order for them to be enforceable against third parties.
November 1994 Index