Pursuant the entry into force of the USMCA agreement in July 01, of 2020, the Intellectual

Property Law in Mexico was reformed and new body of law was issued. We take care of each
topic in the light of the new FEDERAL LAW FOR THE PROTECTION OF INDUSTRIAL (which
entered into force in November 05, of 2020)

 Utility Patents
o Subject matter eligibility (software/computer implemented invention exclusions)
o Ease of application process (typical number of office actions, typical duration,
examiner interviews)
o Ease of enforcement (injunctions, damages, etc.)

Utility Patents
Subject matter eligibility

Patentability Requirements

Any new invention (absolute novelty), with an inventive step and with an industrial application
is allowable for a Patent.

We want to point out; that, unlike the USPTO, the patent examiners in Mexico are not required
to include considerations or documents they reviewed to conclude that the invention is
patentable. So the notice of allowance is a plain and simple document inviting the applicant to
pay the granting fees and the date to so.

However, depending on the matter to be patented, the number of actions to overcome may
vary. We can confirm there are gray areas where the Patent Office is more reluctant to grant
protection, such as those related to software.

ARTICLE 47. In particular, these shall not be considered inventions:

I. Discoveries, scientific theories or their principles;
II. Mathematical methods;
III. Literary, artistic or any other aesthetic creation;
IV. Schemes, plans, rules and methods for the exercise of intellectual activities, for games or for economic-commercial activities;
V. Computer Programs;
VI. Methods to present information;
VII. Biological and genetic material as found in nature;
VIII. Juxtaposition of known inventions or combination of known products, except where they are so combined or merged that
they cannot function separately or where their particular features or functions have been so modified as to produce an industrial result or
their use is not obvious to a person skilled in the art, and
IX.- Variation of use, shape, dimensions, or materials of known inventions, except when such variation implies an industrial result
or a non-obvious use to a person skilled in the art.
The subject matter provided for in sections I to VII above shall not be considered an invention, when the application exclusively
claims the same, as such or in itself.

The new “article 47” is similar to “article 19” (of the previous law) in putting out a lists of what
is not considered an invention, and therefore not allowable. However, the addition of the

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the inclusion of a condition of non-patentability to reject a software when only claimed by
itself, is an open door to protect computer implemented inventions.

Utility Patents.
Ease of application process

Prosecution
All patent applications are subject to a formal exam and a final examination (patentability
study).

Formal Exam               (one action on average)

The formal exam is to corroborate the bibliographic information typed in the application
format and to verify the specification is a text with the minimum required chapters (Title of
Invention, Antecedents/Prior art, Description of the invention, Claims, Summary of the
Invention and Drawings).
Typically there is at least one office action in this stage, most likely it will be related to the
translation of documents, or in connection to a power of attorney or a transfer of rights.

Since most applications are submitted to ensure a filing deadline is not missed, there is always
some document or translation to Spanish to take care of afterward. Therefore a typical case will
face at least one formal office action. 
The FORMAL EXAMINATION RESULT is issued after all formalities have been met and the
application must be published in the Intellectual Property Gazette (18 months after the filing
date in Mexico.
The formalities are usually taken care of between 1 to 3 months after the filing date, so the
result of the formal exam is ready between 5 to 8 months after the filing date.

The publication of the application is free of charge (attorney or patent office). It is done
automatically and without paying any fees, as soon as the application is ready to be published.
As explained earlier, it will be done as close to 18 months from the filing of the application.

FINAL EXAMINATION             (at least one action)

The analysis of the invention is done after the application has been published and according to its
filing turn. On average, an official action is issued between 40 to 45 months after the filing date in
Mexico.
Typically most applications face a FINAL EXAMINATION OBJECTION; this can be related to
novelty, inventive step, or clarity and sufficiency in the description.

Some applications (about 20%) don’t get any "actions", and the final EXAM consists only in
receiving a notice of allowance.

Meetings with Examiners

Reunions with examiners have been going on for many years. They are useful to discuss the nature of
objections and how to overcome when, and to give an explanation of the invention to the examiner,

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(when from the objections of the action one can deduct it is not being understood). In the past, the
reunions were informal and could be arranged by phone call. 

The meetings started taking place without proper regulation. They started with the basis of good faith
and because of the compromise of the Mexican Patent Office to fulfill its goals.

Today they are set in writing. The meeting is now arranged by email, stating the purpose of the
reunion, and setting the date an hour of the same. A survey of the meeting is done after concluding
the same 

Areas of opportunity
The Mexican Patent Office lacks its own patenting guidelines ; customarily they use those of the
European office.

The Final Examination Area is made of between 70 to 100 examiners on active duty. They vary in
experience; some have 10 years of experience, others have only one. Sometimes it happens that
examiners with one or two years of experience only carry out exams. In this scenario is where
naturally we face more office actions.

Notification of official actions

Receiving an official action in the past was a very formal act. According to the new legislation all
actions take effect upon its publication in the intellectual property, making it indispensable to have
technological tools (software) to process and analyze the Gazette. This important change applies to
Patents and Trademarks.

Utility Patents.
Ease of enforcement

Contentious and Enforcement of Patents experienced several improvements with the entry into force
of the new law, particularly in these aspects:

New and improved empowerments are given to the MPTO (Mexican Patent and Trademark Office=
MPTO) The MPTO will be able to condemn, qualify and quantify the amount of compensation for
damages in the Infringement procedures. (This was not available before. The plaintiff had to collect
damages in a separate tortuous long civil procedure). 

-Also, the MPTO is now able to Demand or collect the payment of the fines imposed on infringers. 

To collect damages the plaintiff must expressly state: The existence of a causal relationship between
the offending conduct and the injury caused to the affected owner, and The determination of the
damage or injury caused.

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This stage can only start after the ending of the infringement procedure. It starts with a written
petition that can only be submitted after the resolution declaring the infringement is firm (not facing
an appeal process or it has ended).

To solve controversies in a more expedited manner, a conciliation option during the prosecution of a
contentious matter is now available.

The grounds for invalidity are no longer time-limited (a 5 year window was set in the past).

On paper, all the new dispositions are set to shorten the time to enforce and it seems that the time to
obtain the desired result will be shortened. 
In this regard, this can only be confirmed in practice.

Other important recent improvements are:

The possibility of a fully online prosecution which possible to process cases without the need for
original paper documents, as long as the electronic copies of the papers meet the requirements set by
Mexican Law.
For priority documents the implementation of the DAS code enables claiming a priority just
providing the digital code, having the benefit of not submitting the certified copy.

COMPENSATION FOR TIME LOST DURING PROSECUTION

At request of the affected party, a complementary certificate to adjust the validity of a patent
may be allowed, when during the prosecution of said patent there is an unreasonable delay,
directly attributable to the Patent Office, which results into a period of more than five years,
between the filing date of the application in Mexico and the granting of the patent.

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 Design Patents
o Subject matter eligibility
o Ease of application process
o Ease of enforcement

Industrial Design,
Subject matter eligibility

Industrial Designs in Mexico comprise Industrial drawings and Industrial Models.

 Industrial drawings; are any combination of shapes, lines, or colors incorporated in an

artisanal or industrial product for ornamentation purposes and which give it a specific
appearance of its own; and
 Industrial models, which are constituted by any three-dimensional shape that serves as
a model or pattern for the manufacture of an artisanal or industrial product, giving it a
special appearance that does not involve any technical effects.

It should be noted that artisanal products and graphic animated interfaces are recent
incorporations as protectable matter.

New article 72 stipulates Industrial Design applications can contain one design or several
related embodiments. This was not textually described in the Law, although it occurred in
practice. A specific official fee has been created to pay for additional embodiments. This
impacts the cost of the protection because avoids the necessity to file divisional applications.

For a design to be considered as related to other embodiment they must fulfill the below
describe conditions

I.- They can be identified with the same name in the application;
II.- They exhibit the same new characteristics in common, and
III.- They produce the same general impression, even if the industrial designs differ from each
other in irrelevant detail.

To be allowed Industrial Design registrations must be new.  The novelty concept applied for
Designs is the following
ARTICLE 67.- For the purpose of this Chapter:
I. “New”, refers to the design created independently and differs significantly from known designs or combinations of known design
features;
II. “Independent creation”, when no other identical industrial design has been made public before the filing date of the registration
application, or before the date of the recognized priority. Industrial designs whose characteristics differ only in irrelevant detail shall be
regarded as identical; and
III. “Significant degree”, refers to the general impression that industrial design produces on a person skilled in the art and that differs from
the general impression produced by any other industrial design, which has been made public before the filing date of the registration
application or before the recognized priority date, considering the degree of freedom of the designer for the creation of the industrial
design.

Industrial Design,

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 Ease of application process 

Design Prosecution

Registrations issued for this figure is usually granted between 13 to 24 month from the filing
date. The applications are also subject to a formal and final examination, and in between, they
are also published. All the exams and the publication are included in the filing fee. 
The formal exam follows the same requirements as the Patent Formal Exam. The actions are
more inclined to be related to the quality of the drawing or pictures. 
One office action (formal or final) is what the applicant will typically face for this type of case.
It is important to point out the applications are published during prosecution (after the formal
exam is approved). It will be done as soon as possible.

Industrial Design,
Ease of enforcement

The same improvements available for patent infringement benefit the protection of Industrial
Designs.  It takes about 1.5 years to 2 years from the filing of the infringement complaint or suit
for the Patent Office to issue a resolution.  This time frame is the average time for all
contentious matters to be decided with the Mexican Institute of Industrial Property.

Seizures and remedies to prevent Intellectual Property Rights are now more specific and better
described:
Article 344.- In the procedures related to the alleged violation of any of the rights protected by this Law, the Institute may adopt the
following measures:
I.- Order the withdrawal of circulation or prevent it, concerning the merchandise that infringes the rights of those protected by this Law;
II.- Order to withdraw from circulation:
a) Objects manufactured or used illegally;
b) Objects, packaging, containers, packaging, stationery, advertising material, and the like that infringe any of the rights protected by this
Law;
c) Advertisements, signs, labels, stationery, and the like that infringe any of the rights protected by this Law, and
d) The utensils or instrument intended or used in the manufacture, elaboration, or obtaining of any of those indicated in paragraphs a), b)
and c), above;
III.- Prohibit, immediately, the commercialization or use of the products with which a right of those protected by this Law is violated;
IV.- Order the insurance of assets, which will be carried out following the provisions of articles 362 to 365;
V.- Order the alleged offender or third parties to suspend or cease the acts that constitute a violation of the provisions of this Law;
VI.- Order the suspension of the free movement of goods destined for import, export, transit, or, where appropriate, any customs regime,
which constitutes a violation of the provisions of this Law, following the applicable legal regulations on the matter. customs;
VII.- Order the presumed offender or third parties to suspend, block, remove content or cease acts that constitute a violation of this Law
through any virtual, digital, or electronic means, known or to be known, and
VIII.- Order to suspend the provision of the service or to close the establishment when the measures provided for in the previous sections
are not sufficient to prevent or avoid the violation of the rights protected by this Law.
If the product or service is in the store, the merchants or providers will have the obligation to refrain from its sale or provision from the
date on which the resolution is notified.
Producers, manufacturers, importers and their distributors will have the same obligation, who will be responsible for immediately
recovering the products that are already in the trade.
If the natural or legal person to whom the measures were imposed, does not comply with what is ordered in them, he/she will be entitled to
the sanctions provided in sections I or III of article 388 of this Law.
The Institute may adopt ex officio the provisional measures provided for in this article if deemed appropriate.

The means to prevent IP violations are accepted and executed when a bail is posted by the
Holder and the following conditions are met

a) The existence of a violation of their right;

b) That the violation of their right is imminent;

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c) The existence of the possibility of suffering an irreparable damage, or
d) The existence of well-founded fear that the evidence will be destroyed, hidden, lost or
altered.

The provisional measures described in the previous lines are available for any IP violation
(Patents, Designs and Utility Model Registrations).

Duration of the Protection

Several years ago the validity of Designs was extended from 15 years to the currently
attractive duration of 25 years. Such extension changed the way this rights are renewed.
Design registration are now taken care in renewal payments of a 5 year durations, when
in the past they were maintained in force paying annuities.

Since the extension was allowed to benefit designs granted for the previous duration, a
mixed scheme of maintenance is involved in cases that opted to take advantage of this
extension.

 Utility Models
o Subject matter eligibility
o Ease of application process
o Ease of enforcement
o Value of having a utility model

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 Utility Models.
Subject matter eligibility

Utility Models validity is now 15 years long (previously only 10). This figure is valuable
for its new duration and because the only requirement to allowed is novel and be of
industrial application. Therefore it cannot be rejected by inventive step, making available
becoming a route or means to protect inventions with little inventiveness.

Utility Models.
Ease of application process

Utility Model registrations are allowed on average two years from the filing date, if not
less. They typically just face a formal action, being unlikely to confront a substantive
action.
Just like patents and designs, this type of applications are subject of a formal exam and a
final examination, being also subject of an in-between publication in the IP Gazette.

Utility Models.
Ease of enforcement & Value of having a utility model

The advantage of this type of protection is cost benefit, because the official fees are
similar to those paid for INDUSTRIAL DESINGS. The enforcement of a Utility Model is not
so common because a literal infringement of all its features has to occur for and
infringement to occur. However, they are a good support for cease and desist letter.
It is rare for the average individual in Mexico to know the restrictions or limitations of a
Utility Model. So a registration is useful to dissuade a considerable number of
competitors

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