Congress Amends IP Law

January 11, 2011

BY ERWIN CRUZ

• The industrial application requirement for patentability was modified to include a need to demonstrate the possibility of the “practical utility” of the invention and to support such utility fully in the written description.
• In a period of six months after the publication of the patent application, information related to the patentability of an invention can be filed before the Mexican Patent Office (IMPI) by any third party. If filed, the information may be considered at the examiner’s discretion and it will not suspend the application process. The person filing the information will not be considered a party to the application and will not have access to the patent file, nor immediate legal standing to challenge a granted patent, as was intended in the initial project or reform.
• After a patent is granted, any third party can inform the IMPI of causes of invalidity. The IMPI may consider such information at its discretion to initiate an ex officio cancellation proceeding.
• A new provision sets down the offence of attempting an infringement action when a previous request for infringement has been denied in reference to the same patent. This provision is unclear and is likely to cause controversy in the future.
• According to the IP Law, injunctions can be imposed during the course of a patent infringement action and the title holder must post a bond in order to secure possible damages arising from those injunctions if the infringement is denied. Similarly, the injunctions can be lifted immediately if the alleged infringer files a counterbond in favour of the plaintiff. A paragraph has been added to the corresponding article indicating that the amount of the counterbond must be 40% higher that the amount of the bond.