Federal Law for the Protection of Industrial Property Relevant changes on Patents

November 4, 2020

On July 1, 2020, and as a result of the entry into force of the United States–Mexico–Canada Agreement (USMCA), the new Federal Law for Protection of the Industrial Property (IPPL or the new IP Law) was enacted.

The new IP Law represents an important legislative change, as it is aimed at matching the domestic law with the standards set by the new trade and cooperation agreements signed by Mexico in recent years, and it will come into force on November 5, 2020.

The new IP Law also represents a major change to most of the chapters of the former law, impacting the protection of the various legal figures contained in the law.

Focusing specifically on the protection of Industrial Property Rights, the new law is introducing new changes on patent prosecution, as follows:

• Double patenting prohibition. While this is the current practice, the new law introduces an explicit prohibition.

• Grace period for prior art disclosures made by third parties in violation or breach of confidential agreements.

• A new legal system for divisional patents, narrowing the possibilities for patent owners to divide their parent application multiple times.
• A new “Bolar” clause for biotechnological and chemical inventions.
• Supplementary Patent Certificates (SPCs) to compensate for the delay in granting the approvals of marketing authorizations.
• Prohibition for narrowing the scope of the allowed claims when an invalidity action has been filed.

Under separate and successive communications, OLIVARES will be focusing on each one of the items above, providing you with the analysis and details of these changes implemented in the IPPL.