In 2018, Mexican IP law underwent major amendments relating to almost all intellectual property rights, including patents, utility models, industrial designs, trade marks, non-traditional trade marks, trade dress, certification marks, appellations of origin, geographical indications and other related issues such as acquired distinctiveness. This article briefly points out and comments on the most relevant amendments.
Amendments to invention-related law: patents, utility models and industrial designs
These amendments came into force on April 27 2018.
Availability of information
Formerly, industrial design applications, utility model applications, and divisional applications of any kind were not subject to publication by law. This limited information led to great uncertainty regarding pending rights. Against this backdrop, the amendments bring the Mexican system more in line with leading jurisdictions. All the types of applications mentioned above are now published before undergoing substantive examination.
Prosecution time for patent applications
This amendment relates to third party observations, which can be submitted by any person against the patentability of an application within a fixed term after a patent application has been published. The term, within which the examination cannot start, has been reduced from six to two months.
Industrial design examination
Conventionally, the creators of a design were labelled inventors, but with the new amendments they are now called designers.
Regarding substantive requirements for industrial designs, the Law now defines novelty in terms of "independent creation" requiring a design to be different to a "significant degree" from designs which are already known or a combination of features of known designs. Both concepts, which have been adopted from the European system, are new to the Mexican IP Law. While the addition of the concepts is meant to have an impact on examination and litigation, the Patent Office has indicated that, for the time being, it will not significantly change the methodology for assessing the novelty of industrial designs.
Industrial design applications will now indicate the product for which the design is intended, instead of just indicating the type of product, as was previously the case. On the one hand, this provision has the potential to limit the scope of protection of industrial designs granted under the new provision. On the other hand, the amendments might bring more certainty to third parties, especially to players in the same industry.
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