In late 2019, the discussions on the United States –Mexico – Canada Agreement (USMCA) and the protocol that modified it under pressure from the Democrats took place. The Mexican Senate ratified it on December 12 2019 and the US Congress on January 16 2020.The process in Canada is likely to take place in the following months and the USMCA might be enacted by the middle of 2020, including the intellectual property provisions.
In this context, a fully new industrial property law (IPL) was proposed in the Mexican Senate. The Mexican Institute of Industrial Property (IMPI) supported the announcement. Although it was stated that one of the reasons behind the proposed law is to implement the USMCA's provisions, these provisions actually comply with practice undercurrent Mexican law, at least for inventions (though there are a few issues which will be discussed in this article). The proposed new law has a more ambitious objective than simply updating Mexican patent law to keep it in line with new trends in technology.
The bill is comprehensive and covers all aspects of industrial property rights, but only the provisions affecting inventions will be addressed below.
From 2018 onwards, there have been several reforms to the Industrial Property Law (IPL) that have caused an impact on patent and design prosecution practices. It was known that the reforms to the IPL enacted then were only those that were urgently needed for consistency with the Hague Agreement Concerning the International Registration of Industrial Designs(The Hague Designs System) into which Mexico had been incorporated, the acquired obligations under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and the ongoing negotiations with the European Community, the USA and Canada, and the European Free Trade Association (EFTA)
However, a more comprehensive reform to the IPL that required more time and work was still needed. With the change in political environment that came along with the presidential election of 2019, the new IMPI director, Juan Lozano, sped up the process of the change in the law through one of the senators of the governing party MORENA, Senator Ernesto Perez-Astorga. Senator Perez-Astorga submitted a new bill for substituting the current IPL before the Chamber of Senators on November 14 2019, a submission which was announced on November 11 2019 with full support from the IMPI. Almost at the same time, another senator of the party Movimiento Ciudadano (MC), Senator Noe Fernando Castañón-Ramírez, submitted a comprehensive reform to the current IPL
According to the parliamentary rules of the Mexican Congress, the initiatives will have to be studied and voted on together, along four other minorinitiatives that are also pending at the Mexican Senate. The core of the study will be the Perez-Astorga initiative because of the support the IMPI is providing and because it is from the MORENA party, which has the majority in both Mexican Congress chambers. The analysis below is based on the Perez-Astorga initiative as it is the one with the greatest support.
General provisions affecting inventions
The initiative provides express authorisation to submit partial translations in Spanish of documents in a foreign language (Art. 13) but only in the case of infringement or nullity proceedings. This is a good tool, but there does not seem to be a reason to restrict this benefit to only these proceedings when it could be extended to patent prosecution. In this practice, it is very common to receive requests from patent examiners to provide foreign language documents which, according to current and new laws, must be translated into Spanish in full. This is a significant cost for applicants, who often prefer to abandon applications than to incur expenses that could rise as high as 10,000 USD when, for example, long documents in oriental languages are involved.
In line with Juan Lozano's announced intention as new IMPI director that everything should predominantly be managed through electronic filings, different articles of the law now include the ability to electronically sign documents and include other rules for electronic communication
Another general provision to watch in the current and proposed laws relates to the confidentiality and availability of abandoned files to the public. The proposed law establishes in Article 23 that only those files that are published and pending, or in force shall be available to the public, leaving out the availability of abandoned files to the public.
Article 24 of the proposed law exempts from confidentiality obligations unpublished files which are requested by a judicial authority, which, in turn, expressly contravenes Article 168 of the same law. This must be fixed in order to protect the confidentiality and interests of applicants until publication of applications.
Finally, a transitional article is necessary to manage the current registry of powers at the IMPI so that such a registry is kept in force and applicants need not register powers again.
Inventorship and ownership of employee's inventions
The current IPL references employment law regarding employee's inventions, which establishes that employees' inventions belong to the employer. The current provisions do not regulate other work relationships. The proposed law broadens the scope and refers to "agreements or legal instruments regulating a working relationship". Although the provision reinforces the validity of clauses regulating such relationships, it might not be enough. The proposed law could provide a default provision for determining ownership when contracts are silent about it.
In addition, in the case of researchers in public research centres or institutions there is an express indication that they must receive the benefits established in the applicable law. Accordingly, in collaborating with these types of institutions, the provisions related to compensation for researchers within such institutions will be crucial if these provisions finally pass.
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