Overview (March 2001)

Industrial property in Mexico is handled by the decentralized agency the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial, or IMPI).

The Industrial Property Law has been in force since June 27 1991 and was amended on October 1 1994. A new law is under consideration but has not yet been approved.

Mexico is a member of the Patent Cooperation Treaty (PCT) and, as of January 1 1995, PCT applications are being accepted.

Patents

The existing law covers the patenting of inventions in nearly every field of economic activity. It expressly includes protection for second medical uses of chemical compounds.

Common practice has been to accept claims drafted according to the European Patent Convention. However, claims protecting the direct use of pharmaceutical and chemical compounds are not accepted.

The only exceptions for patentability of an invention are the following:

• essentially biological processes for the production, reproduction and propagation of plants and animals. This provision refers to the non-patentability of plant and animal breeding methods, but does not refer to processes involving molecular biology and genetic engineering;
  
  
• naturally occurring biological and genetic material. This provision refers to non-transformed biological and genetic material (ie, material in which humans have had nothing to do with the transformation), but does not refer to genetically engineered material;
  
  
• animal species. This prohibition does not apply to transgenic animals, which can be regarded as patentable;
  
  
• the human body and its living parts; and
  
  
• plant varieties, although these inventions may be protected by a special, separate law.

Novelty
Absolute novelty is necessary for a patent to be granted. The prior disclosure of an invention by the inventor or the applicant is not a bar to novelty, provided that the application is filed within one year of the date of the first disclosure. Publications of an invention contained in an application or in a patent granted by a foreign Patent Office are not included in this exception.

Unity of invention
An application containing one single invention, or a group of inventions related to each other and constituting a single inventive concept, is regarded as a unit. Such inventive concepts include the following:

• a product and a process for its manufacture;
  
  
• a process and an apparatus for carrying this out; and
  
  
• a product, a process and an apparatus, if the process is for manufacturing the product and the apparatus is for carrying out the process.
  

Other matters

The specification and drawings filed cannot be amended (other than to correct clerical errors). Any amendment of the claims must be duly supported by the specification and/or drawings.

Applications are published as soon as possible after 18 months from the filing date or the priority date. A special petition for advance publication may be requested. Opposition is not dealt with in the law, but neither is it forbidden. Opposition against a published application may be filed at any time while it is pending. The claim for damages on infringement of a patent will be retroactively enforceable from the date of publication of the application.

Patents last for 20 years from the date of filing the corresponding application.

It is not compulsory to utilize a patent, but it is a good idea to be able to prove that a patent is being worked in order to avoid the possibility of a compulsory licence. The import into Mexico of patented products or products manufactured by the patented process is sufficient reason to prevent a compulsory licence being granted.

Regardless of any independent examination it carries out, the IMPI will accept or may require the filing of documents related to the search reports or the substantive or novelty examinations issued or made by foreign examining patent offices.

The interpretation adopted by the IMPI has been that the provisions of the law do not imply the authorization of parallel imports in the field of patents. This means that no international exhaustion of patent rights is provided for by the Mexican law.

If products are being manufactured or at least sold in Mexico, a stamp stating "Patented Product" should be sufficient. It is not necessary to mark the patent or registration number on the product.

Cancellation
Cancellation or nullity actions against granted patents may only be based on the following grounds:

• if the patent was granted against the substantive requirements. These are patentability, novelty, non-obviousness, industrial application, and initial filing requirements;
  
  
• if it was granted against the provisions of the law in force at the date of grant;
  
  
• if during the prosecution of the application, the applicant incurred an abandonment action; or
  
  
• if the grant of the patent was effected under a grave error or oversight, or if the patent is granted to a person who is not entitled to own it.

Prescription lasts five years from the date of publication of the granted patent in the Official Gazette for the grounds described in the last two points. Otherwise cancellation action can be taken at any time.

Utility Models

Utility models are used to protect inventions used in the arts that do not reach the level of inventiveness necessary to warrant patent protection. Only devices, apparatuses, tools and machines may be subject to utility model protection. All types of chemical and biological inventions are excluded.

Utility models last for 10 years from the filing date.

The novelty requirements for a utility model are the same as those for patents.

Industrial Designs

Industrial designs include both industrial drawings and industrial models. ‘Industrial drawings’ are defined as any combination of figures, lines or colours incorporated in an industrial product with ornamental purposes. ‘Industrial models’ are defined as any three-dimensional shape which can serve as a model or pattern for the manufacture of an industrial product, without technical effects.

Industrial design registrations last for 15 years from the filing date.

The requirements of novelty for industrial designs are the same as those for patents.

Trade Secrets

Trade secret protection is expressly included in the law. It is enforceable not only against a person who illegally obtains a trade secret from the premises of the owner, but also against any third persons who subsequently acquire the trade secret from the first person and use it either to obtain economic benefits or to damage the trade secret owner. These actions are considered as crimes in the corresponding section of the law.

A trade secret will only be considered as such when the information is contained in documents (including electronic documents), optical disks, microfilms, films or other similar instruments. No information will be considered a trade secret if it:

• falls into the public domain;
  
  
• is obvious for a technician in the art (without hindsight); or
  
  
• must be disclosed by a legal or judicial disposition.

If a trade secret must be disclosed in a judicial or administrative process, the receiving authority will adopt all the necessary measures to prevent its disclosure to third parties that are not party to the controversy. No interested party will be able to disclose or use the trade secret.

However, the licences for the use of trade secrets granted to Mexican parties must be recorded before the Patent Office in order to be enforceable against third parties, if patent rights are involved.

Breeders' Rights

On December 22 1995 Mexico approved the International Convention for the Protection of Plant Varieties of October 23 1978.

The following characteristics must be present in an application for registering the protection of breeders' rights:

• novelty;
  
  
• distinctiveness;
  
  
• stability;
  
  
• homogeneity; and
  
  
• a denomination, which implies a specific identification.

It will be necessary to accompany the application with the results of the characterization, as well as with the essays and tests.

Protection lasts for 25 years for perennial, forestal, fruit-bearing, ornamental and graft-holding species, and 20 years for all other species.

Integrated Circuit Designs

Protection for integrated circuit designs was included in the Industrial Property Law on January 1 1998.

To qualify for protection the layout of the design must be original and must not have been commercially exploited anywhere in the world. However, the design will still be registrable even if it has been ordinarily commercially exploited in Mexico or abroad, provided that the registration application is filed within two years of the date of the first ordinary commercial exploitation.

Registration lasts for 10 years and is non-renewable.

The layout designs must show the letters M or T, either within a circle or within a frame of any other shape, accompanied by the name of the registrant.

The registration of a layout or topography for an integrated circuit confers the right to prevent other unauthorized persons from reproducing the protected layout by incorporation in an integrated circuit or in any other manner. It also protects against importing, selling or distributing in any manner and for commercial purposes any of the following:

• the protected layout or topography;
  
  
• an integrated circuit in which the protected layout is incorporated; and
  
  
• any product incorporating an integrated circuit which in turn incorporates an illegally reproduced protected layout or topography.

Trademarks

Words, design marks, three-dimensional shapes, trade names and company names, and names of people are all registrable as trademarks.

The following are non-registrable:

• capricious spelling variations and artificially constructed non-registrable words;
  
  
• words, designs and three-dimensional shapes represented in a dynamic manner;
  
  
• well-known trademarks in Mexico, regardless of the fact that these may identify different goods or services. A ‘well-known trademark’ is defined a mark which is recognized by a predetermined sector of the public or in Mexican commercial circles as a consequence of commercial activities developed in Mexico or abroad by a person using the mark, as well as a mark that is known in Mexico as a consequence of promotional activities or publicity;
  
  
• the use of a registered trademark as part of a trade name or company name; and
  
  
• single digits not accompanied by other distinctive signs. Isolated numbers containing two or more digits are registrable as trademarks.

Duration and renewal
Trademark registrations last for 10 years and are indefinitely renewable for equal terms. The cumbersome 'proof of use' requirement has been replaced by a sworn declaration. Trademark registrations can be renewed without the registrant providing actual proof of use. Instead, the registrant must declare under oath that the trademark is being used and that its use has not been suspended for more than three consecutive years.

Trademarks must be used within three years of the registration being granted. If a trademark is not used within this period or its use is suspended for three consecutive years, the registration is subject to cancellation actions from third parties.

If the registrant is not using the mark and does not wish to risk confronting a cancellation action, then it is recommended that a fresh application be filed to re-register the trademark before the expiry of a three-year term of non-use, and to cancel voluntarily the existing registration.

Use of trademarks
Trademarks may be used in a different form to that in which they were registered, provided that the modifications do not change the essential characteristics of the trademark.

Licences for the use of trademarks must be registered before the IMPI in order to be enforceable against third parties.

Marking
The international ® symbol is accepted for the marking of goods. Although marking goods is not compulsory, goods manufactured in Mexico must be marked in order to be able to obtain a prompt injunction, as well as the recovery of damages from infringers.

Parallel imports of trademarked goods are not considered an infringement of a trademark registration and are fully permitted, provided that the products imported are the genuine products manufactured by the registrant or a licencee thereof.

Cancellation
The following are grounds for cancelling trademark registrations:

• if the registration was granted against the provisions of the law in force when the registration was granted. This action has no prescription and may be effected at any time;
  
  
• previous use of a trademark identical or confusingly similar to the registered trademark. Prescription of this action is for three years from publication of the registration in the Official Gazette.
  
  
• if false information is contained in the application and a registration is granted despite the existence of a previous registration for a confusingly similar trademark. Prescription for this action is now five years; and
  
  
• registration of the trademark or a confusingly similar trademark by the agent, licencee, distributor or attorney of the owner of the trademark. In the latter case the registration will be regarded as obtained in bad faith. The cancellation action has no prescription and may be effected at any time.
  

Slogans

A ‘slogan’ or ‘commercial advertisement’ is defined as a phrase or sentence designed to advertise commercial, industrial or service-rendering establishments, as well as products or services, in order to distinguish them from others of the same class.

A slogan registration lasts for 10 years from the filing date and is indefinitely renewable for equal periods of time.

Trade Names

Trade names used by a company are protected without the need of registration. The protection covers only the area of influence of the owner, but may be extended to cover the whole country if the company’s business extends nationwide.

Good faith in the adoption and use of a trade name is presumed if the publication of the trade name in the Official Gazette is examined and verified before the IMPI.

The effects of this publication last for 10 years from the date of filing, and are indefinitely renewable for equal periods of time.

Litigation

Illegal actions are no longer considered crimes, but rather administrative infringements for which an administrative declaration of infringement must be obtained from the IMPI. The only exceptions to this rule are the following:

• continuation of an act constituting an administrative infringement once the first administrative declaration has been obtained;
  
  
• counterfeiting trademarks in bad faith and on a commercial scale;
  
  
• disclosure of a trade secret to third parties with the purpose of obtaining a profit for oneself or for another third party, or with the purpose of causing damage to the trade secret owner;
  
  
• misappropriation of a trade secret for use or disclosure to a third party; and
  
  
• use of a trade secret disclosed by the trade secret owner or by its licensee, or by any third party that has no authorization to so disclose or use the trade secret.

No ex officio (from office) procedures are available for prosecuting these crimes. All actions must be initiated by the interested party.

The IMPI may seize any infringing goods, equipment, instruments, specifications, plans, manuals, molds, books, records, documents, samples, labels, stationery and invoices that might serve as proofs of the infringement, if an inspection of the premises of the alleged infringer shows that an administrative infringement or crime is taking place.

During the prosecution of an administrative declaration of infringement of any one of the rights granted by the law, the IMPI can take any of the following actions:

• prevent the circulation of the infringing goods;
  
  
• issue orders for prohibiting the circulation of the infringing goods, packages, stationery, publicity materials, advertisements and tools or instruments used for the manufacture of infringing goods;
  
  
• immediately prohibit the commercialization or use of the infringing goods;
  
  
• order the seizure of the items;
  
  
• order the alleged infringer and third parties to cease the infringing acts; and
  
  
• order the closure of the establishment if these measures are not sufficient to stop the infringement.

In order to obtain an injunction, the plaintiff must file a suitable bond before the IMPI to guarantee payment of any damage caused to the defendant. if the trial is resolved in favour of the latter. Conversely, the defendant may file a bond before the IMPI to lift the injunction.

The sanctions for an administrative infringement include the following:

• a fine of up to 20,000 times the daily minimum wage (approximately $110,000);
  
  
• an additional fine of up to 500 times the daily minimum wage for each day in which the infringement continues (approximately $2,700 per day);
  
  
• the closure of the establishment for up to 90 days;
  
  
• the permanent closure of the establishment; and
  
  
• administrative arrest of up to 36 hours.

The sanctions for a crime are two to six year’s imprisonment and a fine of between 100 and 10,000 times the daily minimum wage (from approximately $550 to $55,000).

The law establishes a minimum amount applicable to the recovery of damages, equivalent to 40% of the selling price of each product or service sold by the infringer.

The burden of the proof of infringement in process patents has been reversed. It is now the infringer of a process patent who must prove that the infringing product has been manufactured by a process different to that covered by the patent, provided that either (i) the product is novel, or (ii) the plaintiff has not been able to ascertain the nature of the process despite having attempted to do so.

Federal Law of the Administrative Procedure

In 1994 the Federal Law of the Administrative Procedure was enacted in order to unify all administrative procedures under one law. Article 1 of the law limits its applicability to government entities in direct connection with the central executive officer. Under Mexican legislation, the IMPI is not treated as a centralized entity, but rather as one of the decentralized entities excluded from the application of this law.

Last year, Article 4 of the law was amended so that its application would include all executive entities without distinguishing whether they were centralized or decentralized, except for those entities expressly excluded by the law (the IMPI is not mentioned). It is unclear whether this law applies to the IMPI.

The law includes a provision to prevent undue delays for replies that the authority must deliver to a brief filed by any person. If the authority does not answer within four months, an appeal may be filed to force the authorities to issue a reply immediately. This provision is designed to speed up the process by preventing the authorities from unduly delaying the prosecution of a petition.

In addition, the law also includes a special remedy against all decisions from the authorities. According to the law, this remedy shall be studied by a superior authority to that which issued the first act. This remedy, if applicable, is contradictory to that to which the interested party is traditionally entitled.

The interpretation of this law by the authorities and judges is still far from uniform.

For further information on this topic please contact Patricia Becerril or Oscar Becerril at Becerril, Coca & Becerril SC by telephone (+525 55 254 0400) or by fax (+525 55 254 5152) or by e-mail ([email protected]).

The materials contained on this web site are for general information purposes only and are subject to the disclaimer.