On 20th September 2010 a new decree came into force, reforming several provisions of the IP Law related to patent practice. The main amendments are as follows:
- 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.
- Within six months of 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 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.
- After a patent has been 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 than the amount of the bond.
The original reform project was promoted by the National Association of Drug Manufacturers, whose members mostly participate in the generic drugs market. The initial project included, among other issues, two separate pre and post-grant opposition proceedings, which would delay the grant, and consequently the possibility for the effective enforcement of patent rights. The project was also intended to include additional causes of invalidity related to the use of patent rights in activities in violation of the Federal Competition Law.
This project was reviewed (and modified) by the Senate, which determined that most of the proposed amendments were unnecessary, including the two issues mentioned above. The final project was ratified by the Chamber of Deputies without further modification.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.