IP Law amended

July 15, 2010

BY ERWIN CRUZ SALDÍVAR

Last April, the Mexican Congress approved amendments to the IP Law related mainly to patent practice. These amendments are pending ratification by the Presidential Office and publication in the Official Gazette.
The original project of reform promoted by the generic medicines industry aimed, among other issues, to insert two separate pre- and post-grant opposition proceedings, which would practically delay the granting and therefore the possibility for effective enforcement of patent rights. This reform also intended to include additional causes of invalidity related to the use of patent rights in activities violating the Federal Competition Law.

Fortunately, the original project was reduced and modified by the senate, which determined that the majority of the amendments proposed were unnecessary, including the two issues mentioned above. The final project was ratified by the Chamber of Deputies, without further modification.
The main amendments are:
a)      The industrial application requirement for patentability was modified to include a need to demonstrate the possibility of “practical utility” of the invention, and to fully support this utility in the written description.
b)      In a period of six months after the publication of the patent application, information related to patentability of an invention can be filed before the Mexican Patent Office (MPO) by anybody. 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 of reform.
c)      After a patent is granted, anybody can inform the MPO of causes of invalidity. The authority may consider such information discretionally to initiate an ex officio cancellation proceeding.
d)      There is a provision intended to penalize the repetition of groundless patent infringement actions for the same activity.
Since the project of reform did not pass as originally proposed, the impact of the amendments will depend on the application and interpretation by the MPO and eventually before the courts.
Source: Managing Intellectual Property, Jun 2010.