Amendments to the Mexican Industrial Property Law
On March 13, 2018, the Mexican government and the Mexican Patent and Trademark Office (IMPI) made amendments to the Mexican Industrial Property Law. These changes affect specifically the publication of utility model and industrial design applications, the definition of independent creation and significative degree concepts, the extension term of industrial designs and the shortened time period for third party pre-issuance patent submissions.
These amendments will go into effect beginning April 13, 2018 and a detailed description is below.
Publishing of Utility Model and Industrial Design applications
Under the current law only patent applications are published in the Official Gazette. Once formal requirements are duly fulfilled (Articles 30 BIS and 37 BIS) Utility model applications and design applications will also be published in the Official Gazette as soon as possible. Granted utility models, industrial designs and patents will continue to be published as before.
Definition of Independent creation and significative degree concepts
Article 31 of the current Law defines as registrable designs that are new and susceptible to industrial applicability. On the hand, the same article defines as new the designs that are created independently the known designs or combinations of known features of designs, and which differ significantly therefrom. The amendment introduced a new Article 32 BIS defining independent creation and significative degree.
Independent creation is considered when no other identical industrial design has been made public before the filing date of the design application, or before the recognized priority date.
Significative degree is defined as the general impression produced by the industrial design to a person skilled in the art and that differs from the general impression produced by another industrial design, which has been made public before the filing date of the design application, or before the recognized priority date.
Restriction of Industrial design scope of protection
Article 33 was amended to specify that the drawings must be sufficiently clear for the comprehension of the design and its publication. The second section of this article was amended to require the identity of the product for which the design will be used, and deleting the previous requirement for the genre of the product. Considering the scope of the protection is defined both by the description and the drawings this amendment would appear to be aimed to restrict the scope of protection.
Extension of Term of Industrial Designs
The protection term for an industrial design (Article 36) is established for 5 years. It is renewable every 5 years up to 25 years, calculated from the filing date.
Both industrial design registrations and the renewal thereof will be published in the Gazette.
Renewal of Industrial Designs
According to Article 36 BIS, the industrial design renewal shall be requested by the owner within 6 months prior to the expiration of its term. However, the Mexican Institute will accept those requests filed within the grace period (6 months) contemplated by Article 80, section II of this Law.
Period Shortening of Third party pre-issuance patent submissions
The term for the third party pre-issuance patent submissions has been reduced from 6 to 2 months, in accordance to Article 52 BIS.
Official files open for to public after publication of the application
Once the corresponding application is published in the Official Gazette, the official files for pending utility model, industrial design and patent applications will be open for public inspection. Under the current law the files were considered confidential until the resulting patent was published in the Official Gazette (Article 186).
Industrial design registrations granted before the effective date of the amendment will maintain the original term of 15 years and will be subject to the payment of annuities (paid every 5 years), however, the same may be renewed by two five-year successive periods up to a total term of 25 years from the filing date. The first renewal must be requested within 6 months prior to the expiration of the original 15 year term.
Applicants may opt to prosecute pending design applications under the provisions of the amended Law. To this effect, applicant must file a request with the Mexican Institute within 30 working days from the effective date of the amendment (deadline: May 25, 2018).
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