Amendments to Mexican Industrial Property Law for Patents and Designs

March 16, 2018

Amendments to Mexican Industrial Property Law for Patents and Designs

On March 13, 2018, it was published in the Mexican Official Diary, the amendments to certain chapters of the Industrial Property Law. All the amendments made will be in force upon April 27, 2018.

Among the main changes related to patents, industrial designs, and utility models, the amendments would:

• Define ambiguous terms in the IP Law, including with respect to the requirement for novelty for industrial designs, which currently does not define the terms “independent creation” or “significantly” as stated in the following provision: “Designs that are of independent creation and which differ significantly from known designs or combinations of known features of designs shall be considered as novel…[…].”
• Require a statement of the product to which the design will be applied.
• Modify the term of protection for designs by changing it to a term of 5 years, with five possible renewal periods, that is, protection could last up to 25 years, instead of one 15-year term.
• Industrial designs granted before the entrance in force of this amendments, can be renewed for two periods of 5 years after the expiration of the 15 years period. Renewal petition is due within the last 6 months of the 15 years protection term originally granted.
• Industrial designs under prosecution may enjoy the amendments to the law if a petition is filed between April 27, 2018 and June 11, 2018.
• Provide that design and utility model applications will be published after formal examination is complete. Currently, designs and utility models are only published once granted.
• Provide that, for all patents, designs, and utility models, divisional applications will be published after the formal examination is complete; currently they are not published until granted.
• Once a patent, utility model or industrial design application is published, it will be open to public inspection. Under the current law, such applications can be consulted only by the applicant, the applicant’s representative or other authorized persons until they have been granted.
• Reduces the term provided for third parties to submit “prior art submissions” after publication of an application from six to two months.

Overall, the amendments will be positive for the Mexican IP system, as they provide certainty and fill in several gaps in the IP Law.

This newsletter is intended only as a general discussion of the addressed issues, and should not be regarded as legal advice.