The approval to the reform of the Industrial Property Law in terms of industrial designs, patent prosecution, appellations of origin and the incorporation of protection for geographical indications was published on March 13, 2018.
This reform will come into force on April 27, 2018, in accordance with the following:
1) General provisions:
- Utility models and industrial designs applications will be published in the Gazette of Industrial Property (GPI).
- The exclusion for publishing divisional patent applications, industrial designs and utility model applications in the GPI is eliminated.
- The deadline for any interested third party to submit relevant information for opposing to the granting of a patent application is reduced from 6 to 2 months. This term is counted from the publication date in the GPI.
- Unpublished patent, industrial designs and utility model applications can only be consulted by the applicant or the legal representative thereof.
2) Industrial designs:
- The definitions of the terms "independent creation" and a "significant degree" are established. Said terms are crucial for the novelty exam of industrial designs.
- Guidelines are established for the protection of ornamental elements conferring a peculiar aspect to artisanal products.
- The validity term of industrial designs is modified, from a non-extendable term of 15 years to 5-year renewable periods, reaching a maximum of 25 years.
- Industrial design registers that expire at a later date after the entry into force of this reform may extend their validity for an additional period of 10 years.
- Those interested in applying these provisions to industrial designs applications under prosecution, may opt in by filing the corresponding writ within thirty working days following its entry into force (i.e. up until June 12, 2018).
3) Denominations of origin and geographical indications:
- The definition of appellations of origin is strengthened and the geographical indication figure is included.
- Statutes are established for the protection of appellations of origin and foreign geographical indications, in accordance with International Treaties.
- Statutes are established for the issuance of declaration of administrative infringements and offenses related to appellations of origin and geographical indications.
- A 2-month period is granted to interested third parties for filing relevant information for opposing to the declaration of an appellation of origin or a geographical indication. The term is counted from the date of publication in the Federal Official Gazette.
Comments from our experts
The purpose of the reform is to promote several updates to the Industrial Property system in Mexico, in order to harmonize the practice with international standards.
On the other hand, and aiming to strengthen the protection of domestic and foreign products, the definition of appellations of origin is reinforced and the figure of geographical indication is included. Likewise, there have been also included some guidelines for the protection of the ornamental elements giving a peculiar and proper aspect to artisan products within the figure of industrial designs, which strengthens the protection of national and foreign products.
The intended effect of this reform is to recognize communities that have used and preserved the name of a typical Mexican product which name refers to its origin place, thereby giving consumers the guarantee that goods come from the place with certain manufacture reputation.
The extended protection to industrial designs aims to strengthen and optimize it as legal figure, hence more attractive to designers.
Finally, with the amendments to the Industrial Property Law, there is an opened possibility for third parties to consult the file wrapper of patent, industrial designs and utility model applications after they have been published in the GPI.
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