Mexico’s government publishes new intellectual property laws

The three IP changes are

1. New Federal Intellectual Property Law (governing trademarks, patents, trade secrets, industrial designs, utility models and geographic indications)
2. Reform of the Federal Copyright Law
3. Reform of the Federal Criminal Code (governing, amongst others, relevant IP offenses and enforcement issues)

The general objective is to make the Mexican IP law fit for the challenges of business and developments in the IP environment reflected by new technological trends. Likewise, the intention is to simplify the procedures before the Mexican Institute of Industrial Property (MIIP) and introduce stronger and more effective measures against the infringement of Intellectual Property Rights (IPRs). The New IP Law will come into force on November 5, 2020, while the Reforms of the Federal Copyright Law and Federal Criminal Code came into force on July 2, 2020.

New Federal Intellectual Property Law

Trademarks

• Lack of distinctiveness is expressly established as a ground of rejection.
• The 10 years´ trademark validity is now counted from the granting date (and no longer from the application date), which in particular will affect the date of renewal for those trademarks filed and granted after the New IP law enters into effect.
• The Filing of Declarations of Use is only required for trademarks granted on or after August 10, 2018. 
• Obstacles during the trademark application process will be addressed in one single office action, wherein absolute and relative grounds are covered at the same time.
• Introduction of partial lapsing actions in cases where a trademark is not in use for all of the protected goods or services.
• Trademarks can be declared famous not only when the brand is known by the majority of the Mexican public, but also when it reached a general global recognition. Moreover, the list of requirements to prove that a trademark is famous or well-known has been reduced.
• The response period for oppositions is extended from one month to two months.

Patents, utility models and industrial designs

• Second-medical-use patents are introduced, which is an important step for the potential second-line patent protection.
• Implementation of an explicit Bolar-Exemption, which allows carrying out tests and experimental production necessary to obtain a sanitary registration for medicines.  The New Law does not set a time period as to the applicability of this exception, which means that the latter is valid during the entire patent term.  Therefore, patents will not be considered as infringed as long as the use, manufacturing, or importation of a patented product is for generating tests, information, and experimental production necessary to secure a sanitary certificate.

The Health Supplies Regulation, applicable to Health authorities in charge of granting sanitary certificates, still states that the following time periods for requesting a sanitary certificate apply:

• Biotechnological drug: eight years before the patent expires
• Chemical drug medication: three years before the patent expires

The discrepancy between the New IP Law and the Health Supplies Regulation will need to be clarified in the future.  In the meantime, it is understood that patents cannot be enforced if the Bolar-Exemption applies and Health Authority cannot grant a sanitary certificate for a generic drug until the patent expires.

• The list of inventions excluded from patentability has been modified, adding inventions contrary to public order, scientific ethics, or customs in commerce, in particular:
  • Procedures and products of human cloning
  • Procedures for modification of human genetic identity
  • Use of human embryos for industrial or commercial purposes
• Introduction of supplementary protection certificates: In case a patent process lasts longer than 5 years (counted from its filing date in Mexico), caused by unreasonable delays directly attributable to the MIIP, patent owner may request an adjustment of the patent´s validity – one day extension for each two days of delay from the MIIP.
• The validity for utility models is extended from 10 to 15 years.
• Industrial design protection is expressly extended to artisanal products and not only to industrial products.
• Patents, utility models and industrial designs can be partially challenged with a nullity action in case a ground of nullity affects only parts of those IPRs.

IP Disputes

• Implementation of a specific settlement proceeding for disputes derived from IP infringements.
• Damages may be claimed, incidentally, once the infringement decision turned into non-contestable before MIIP or Federal Courts.

Trade secret protection

• Introduction of new administrative actions to proceed against violations of trade secrets: Trade secret owners are no longer restricted to criminal measures but can also enforce trade secrets by way of administrative actions.

Reform of the Federal Copyright Law

• Notice and Takedown:  Copyright owner may request the takedown of copyright infringing content directly from the online hosts / platform provider that gave access to such content.
• Increased fines for copyright infringements.
• Implementation of new technological protection measures and options regarding information on rights management.
• Internet Service Providers (ISP) will generally not be held responsible (safe harbor) for damages of copyright owner caused by copyright infringements happening at their networks or online systems, as long as they did not control, initiate or lead the infringing behavior, provided they complied with the further requirement laid down in the law.
• It is clarified that ISPs are not obligated to monitor their systems or networks controlled or operated by them or on their behalf, to pro-actively search for possible copyright infringements.
• Federal Court for Administrative Justice will hear and resolve proceedings whereby the validity of Copyright certificates, marginal annotations, and registrations are challenged.

Reform of the Federal Criminal Code

Implementation of crimes related to the following conducts:

• Circumvention of technologic measures for the protection of copyrights and neighboring rights.
• Decoding of telecommunication signals.
• Elimination or alteration of Right Management Data.
• Recording, transmission, or unauthorized copies of cinematographic works shown in cinemas (camcording).

Authored by Bernardo Herrerias Franco, Valentina Schmid