If the owner of a trademark, patent or design fails to notify the Mexican Institute of Industrial Property (IMPI) of a corporate change, legal consequences can arise. For example, if the owner of a trademark, patent or design does not notify the IMPI of a change of ownership, the new owner's right to defend its IP rights will be affected. Further, if the owner fails to notify the IMPI of a licensing agreement or security interest, the agreement will have no effect on third parties.
In the past 20 years, the Mexican Institute of Industrial Property (IMPI) has made it easier for IP owners to use online services. In March 2016 the biggest steps towards a serious change were taken – namely, the issuance of rules for electronic filing and the launch of the online patent and notification systems. However, there is still some way to go before the IMPI is completely paperless.
While innovation in life sciences is key, the efforts required to bring new drugs, devices and other healthcare technologies to market are increasingly burdensome. Accordingly, intellectual property plays a crucial role in protecting investments and incentivising healthcare innovation, although patent regimes often encounter difficulties with regard to patentable subject matter and the evaluation of inventiveness for new technologies.
The Mexican Institute of Industrial Property recently adopted a new rule stipulating that if a rights holder does not file for review or appeal the cancellation of a trademark, registration of the pending trademark will be granted within 45 working days, despite the fact that the decision will still be subject to appeal. It is unclear what would happen if suspension of the newly registered trademark were not requested and the cancellation action were revoked.
In light of the changing global regulatory landscape, patent owners are increasingly seeking stronger patent protection, including for patents that are already in force. Rights holders should therefore be aware of the available post-grant amendment procedures and the type of changes to the granted patent that are permitted in each jurisdiction. Mexican law explicitly allows such amendments to correct errors or limit the extension of the claims.
A legal framework comprising four separate laws governs counterfeiting in Mexico. These laws – alone or in combination – provide rights holders with the necessary tools to take legal action against counterfeiting and seize illegal merchandise, obtain preliminary injunctions and seek appropriate remedies against infringement.
For many years, IP management of government-funded projects in Mexico was non-existent. Mexican law was silent regarding both the ownership of such projects and the agreements governing how grant money was spent. Nevertheless, recent changes in innovation policy have mandated changes in the management of such projects in order to prepare for future innovation opportunities.
Increasingly, Mexican patents have a different (often broader) scope from their foreign equivalents due to opposition proceedings or post-grant reviews held abroad. This situation has led patentees to consider the post-grant amendment of the scope of such patents more often. However, patentees must consider certain issues when assessing the feasibility of amending the claims of a granted patent in Mexico.
Taking heed of technological developments, the Mexican Institute of Industrial Property (IMPI) has made the Mexican IP protection system easier to use and more efficient by introducing online filing and search systems. Fortunately – for both the IMPI and system users – recent statistics on the online trademark application filing and design search systems are especially positive and are likely to improve further in the coming years.
The increase in open innovation and the importance of collaboration in the business and scientific spheres have led to a growing need to deal with co-ownership. Some legal systems have clear co-ownership rules that are specific to IP rights. However, in Mexico, intellectual property is dealt with under the general rules applicable to all types of property, meaning that at times the provisions are not as clear as they could be.
In Mexico, a third party may challenge a patent through either an ex parte proceeding that applies to pending patent applications, or an inter partes proceeding that applies to issued patents. The administrative regime for challenging patent validity is largely similar to other major administrative opposition regimes. However, the Mexican system offers no direct judicial proceeding for challenging patents.
For inventions comprising multiple elements, any elements claimed in the application that are not described in the specification will lead to the failure of the application, as the inclusion of an extra element would unduly extend the scope of protection of the patent. But what happens when the application describes this extra element without providing examples?
The Federal Commission for the Protection against Sanitary Risk has published guidelines stating that the confidential information received with a health approval application is subject to protection against unfair commercial use and public disclosure according to the North American Free Trade Agreement and the Agreement on Trade-Related Aspects of IP Rights. However, the guidelines generate new uncertainties.
Several crucial laws govern counterfeiting in Mexico. Depending on the matter involved, these laws – alone or in combination – provide rights holders with the necessary tools to take legal action against counterfeiting and seize illegal merchandise, obtain preliminary injunctions and prosecute criminal, administrative and civil actions to seek appropriate remedies against infringement.
In order to reduce service times and costs, increase efficiency and transparency and improve the quality of services offered by the Mexican Institute of Industrial Property, an online system for trademark and industrial design applications has been implemented. However, the filing of applications through the new system is optional.
The term 'mnemonics' is normally associated with lists of information and their corresponding rhymes or phrases. However, the mnemonic function can also be applied for other types of information, potentially helping to reinforce the connection that consumers make between trademarks, slogans and other signs on the one hand, and the product or service - and their experience of it - on the other.
The Industrial Property Law provides for a 12-month grace period for the benefit of an inventor (or an inventor's successor in title) in respect of the disclosure of an invention, model or design. If a party attempts to secure a grace period after its application has been filed, the Mexican Institute of Industrial Property will normally refuse. However, the Federal Law of Administrative Proceedings may give applicants another option.
The scarcity of patent litigation in Mexico as compared to other jurisdictions has resulted in a lack of case law in several key areas of patent litigation. One such area is the situation where a product does not have all of the features of the claims of a granted patent, but is so close that it appears that a feature has been changed to circumvent patent coverage through the incorporation of an equivalent feature.
As in many other jurisdictions, the Internet has become one of the most problematic areas of IP rights violations. Time will tell whether a new form of proceeding, known as the 'online trial', will succeed in reducing the backlog in the court system and make it easier to bring cases against infringers. The success of other innovations, such as the creation of the IP Bench, gives grounds for optimism.
It is generally feasible to obtain patent protection in Mexico if method claims are amended to a 'Swiss-type' format . However, the Industrial Property Law has no equivalent of Article 54(5) of the European Patent Convention, which allows purpose-related product claims for a new medical use of a known substance.