i FORMS OF INTELLECTUAL PROPERTY PROTECTION
The current Mexican IP system was developed and implemented from the end of the 1980s to the middle of the 1990s. Mexico signed the North America Free Trade Agreement (NAFTA) in 1992, and implemented the dispositions of the TRIPS Agreement and the Patent Cooperation Treaty (PCT) in 1995. The forms of intellectual property protection available in the country include patent, utility model, industrial design, trademark, industrial secret, appellation of origin, plant variety, copyright and the neighbouring rights, among others.
Patent protection is available for any invention complying with the following three essential requirements: novelty, inventive step and industrial applicability. Exemptions for patentability and non-statutory subject matter are discussed in Section III.
An invention is considered to be any human creation that allows transformation of matter or energy existing in nature for human benefit and the fulfilment of human needs.
The term for a patent is 20 years from the recognised filing date, subject to payment of annuities. The recognised filing date for PCT-derived patents is the international filing date. The patent term cannot be currently extended at all.
Mexico has a first-to-file patent system, but it contemplates a 12-month grace period for previous disclosure of the invention performed by the inventor or his or her assignee. The statute provides for partial priority claim and for third-party observations during prosecution, with no opposition procedure before grant. The term for filing third-party observations is six months after publication of the relevant application in the Official Gazette. Electronic filing and complete prosecution of patent applications are currently possible in Mexico. Public inspection of prosecution of pending applications is not available but until grant.
The scope of protection conferred by patents is determined by the approved claims (literal interpretation; although there is now an isolated court decision setting a precedent for the doctrine of equivalents). The exploitation or working of the patent consists in the manufacture, sale or importation of the relevant product in Mexico. Lack of use for three years counted from the grant date or four years counted from the filing date, whichever occurs later, enables third parties to request and eventually obtain a compulsory licence, unless there are justified reasons for non-use. Patent marking, although not mandatory, is recommended, as it is a requirement for enforcing preliminary measures.
The previous user of a patented invention within Mexico is entitled to continue using his or her invention, provided the prior use is duly proven.
Compulsory licences could be granted to third parties for reasons of public utility; however, the patent owner shall be previously heard and must be compensated economically. No compulsory licence has been granted in the country so far.
Amendments to the claims are permitted before issuance of notice of allowance if they are supported by the specification and drawings, with payment of a fee. Divisions can be requested by the Mexican Institute of Industrial Property (MIIP) during examination if inventive concept (unity) does not exist among the claims. Voluntary divisions are also permitted before paying grant fees for the parent case. Post-grant amendments are limited to correct errors or limit the scope of the granted claims. If a patent application is rejected, the claims are not permitted to be amended during appeal procedures.
ii Utility models
Registration for new utility models with industrial applicability is available in the country (no inventive step required). Utility models are objects, utensils, apparatus or tools that, as a result of a modification in their arrangement, configuration, structure or form, offer a different function with respect to their component parts or advantages of use. The term of protection of a utility model registration is 10 years from the recognised filing date subject to payment of annuities, with no extension. Utility model protection is not available for processes. Utility model applications undergo substantive examination, where novelty and industrial applicability are evaluated under the same standards used to examine patents. Electronic filing and complete prosecution of utility model applications are currently possible in Mexico.
iii Industrial designs
Protection for new industrial designs capable of industrial application is also available. For a design to be novel it needs to be of independent creation, significantly different from already known designs or combinations of characteristics from already known designs. Industrial designs include two-dimensional drawings and three-dimensional models. Only ornamental features are protected.
The protection term is 15 years from the filing date of the application, subject to the payment of annuity fees, with no extension.
Under the current inventive concept standard, it is difficult to obtain a single registration for multiple designs, regardless of whether they fall in the same class of the Locarno Classification. Divisions can be entered either voluntarily or at the MIIP’s request. The practice tends to process one design per filed application. Electronic filing and complete prosecution of design applications are currently possible in Mexico.
The Industrial Property Law (IPL) provides protection for distinctive signs, which include not only product and service trademarks, but also collective trademarks, trade names and slogans. Generally, the exclusive use of such signs is obtained by registration.
Among the mentioned signs, trademarks are the most popular figure of protection. Trademarks can be nominative, non-nominative and mixed. A word mark to be registered must be distinctive, that is, different from any other mark. Multi-class trademarks are not currently available in the country.
In Mexico there is protection for well-known and famous marks. A well-known mark is one known by a determined sector of the public or country’s commercial group. A famous mark is one known by almost all of the consumer public. A specific and yet polemic protection for well-known and famous marks is currently obtained by an official declaration for which some commercial information about the use of the trademark should be submitted and significant fees should be paid.
Filing a letter of consent from the owner of a trademark cited because of similarity issues is possible to try to avoid refusal of a determined trademark. However, this letter of consent is not accepted when the two trademarks involved are identical.
Trademark protection is granted for 10 years from the filing date of the application in Mexico. The registration can be renewed every 10 years. Renewal of the registration of a trademark will only be appropriate if a written declaration under oath is submitted that the trademark has been used on Mexican territory for the products or services to which it applies, and that its use has not been interrupted for a period of three consecutive years.
The Mexican government can declare exceptionally for public interest reasons that certain trademarks cannot be used. The Mexican government is entitled to grant compulsory licences for public interest issues, provided that the trademark owner is guaranteed hearing rights.
Once a trademark has lapsed, any third party can apply and obtain the trademark, even the person who used to be the owner of the trademark should he or she apply for it before a third party does. A trademark declared nullified or cancelled cannot be revived.
The IPL establishes that the illegal use of registered trademarks is a crime. It is an administrative violation deserving a fine and the payment of damages. This also includes the use of a mark similar to a registered trademark to the point of confusion, graphically or phonetically, or as an element of a commercial name when the establishment is engaged in the sale of products or services similar to those covered by the registered trademark. Falsification of a trademark is also a crime.
The most important recent development in the trademark field has been the entrance into force of the Madrid Protocol on 19 February 2013. Also, an opposition system entered into force on 30 August 2016. Under the system, the MIIP publishes patent applications within 10 business days of the filing date, and any interested party can submit opposition arguments within one month of publication. A further publication occurs listing opposed trademarks within another 10 business days. The applicant of an opposed trademark may submit counterarguments within another month. All arguments submitted by the parties are to be taken into account by the MIIP during the substantive examination of the relevant trademark; however, the trademark prosecution process is not stopped by the opposition, so the system resembles a process of third-party observations. Electronic filing and complete prosecution of trademark applications is currently possible in Mexico.
v Industrial secrets
The IPL contains provisions for protecting certain information as an industrial secret, provided such information gives the proprietor a competitive or economic advantage and measures are taken by such proprietor to keep the information confidential. The information constituting a trade secret shall necessarily relate: to the nature, characteristics or purposes of products; to production methods or processes; or to ways or means of distributing or marketing products or rendering services. Examples of information qualifying as an industrial secret are: know-how, some business methods, some lists of clients, etc. The information should be fixed in a tangible medium, including electronic means, to be protectable. In addition to the IPL, industrial secrets are enforceable under the Civil Law for breaches of contracts and claims for damages, and the Federal Criminal Code under which the disclosure of an industrial secret constitutes a criminal offence.
vi Appellations of origin
A denomination of origin is the name of a domestic geographical region that serves to designate a product native to that region, and whose quality or characteristics are exclusive to that geographical zone, including the natural and human factors. The MIIP carries out the denomination of origin declaration by publishing it on the Federation’s Official Gazette. The MIIP, through the Department of Foreign Affairs, processes the registration of declared denominations of origin in order to obtain their worldwide recognition according to international treaties on the matter. The MIIP authorises the use of the denomination of origin to individuals or companies that are devoted to the extraction, production or elaboration of the products protected by the denomination of origin and that carry out their activities within a certain territory, as well as to those entities that comply with the official standards regarding the products in reference. The authorisation has a validity of 10 years, and can be renewed jointly with a trademark.
Products with a denomination of origin in Mexico include, Tequila, Mezcal, Olinalá, Talavera, Bacanora, Café Veracruz, Ambar de Chiapas, Sotol, Charanda, Mango Ataulfo del Soconusco de Chiapas, Café Chiapas, Vainilla de Papantla, Chile Habanero de la Peninsula de Yucatán, Arroz del Estado de Morelos and Cacao Grijalva.
vii Plant varieties
The current plant variety protection system is based on the UPOV Act 1978. The country joined the Act on 9 August 1997. Applications are processed before the Ministry of Agriculture, Livestock, Rural Development, Fishing and Food through the National Service of Seeds Inspection and Certification.
A plant variety qualifying for protection must be new, distinguishable, stable and homogeneous. Additionally, some filing requirements should be met, such as: to propose a denomination; to specify the genealogy as well as the origin of the plant variety; to submit the plant variety or its propagation material (if requested); to provide a description according to UPOV guidelines; to supply photographs; and to supply the relevant trademark, if any.
Priority rights are recognised within the 12-month period following filing in another country with which Mexico has signed a treaty. The protection lasts 18 years for perennial species (forest, fruits, vines and ornamental) and their implant-carriers, and 15 years for other species not previously included.
The Federal Copyright Law acknowledges protection for artistic works. The protected rights can be:
- moral rights and acknowledgements to the author of the work, which are inalienable, non-lapsable, non-renounceable and non-sizeable rights;
- exclusive economic rights: the right to exploit the work in an exclusive manner or to authorise third parties to do so; or
- simple remuneration rights: non-exclusive economic right to obtain payment for the exploitation of a work, applicable to very specific cases having in common that exploitation is performed independently of the author’s consent, although usually legal.
Exclusive economic rights may be transferred or licensed onerously and temporarily. Moral rights cannot be waived by the author. The protection for economic rights lasts the lifetime of the author and up to 100 years after his or her death. Personal rights do not expire, although enforceability of some of them is limited after the death of the author. Registration is not a prerequisite for protection; however, it facilitates litigation.
One interesting and sui generis protection provided by the Federal Copyright Law is called ‘the reservation of rights’. The reservation of rights is the faculty for the exclusive use and exploitation of titles, names, designations, distinctive physical and psychological characteristics or original operational characteristics, as applied, according to their nature, to any of the following genres:
- periodical publications: edited in successive parts with varied content and intended to continue indefinitely;
- periodical broadcasts: broadcast in successive parts with varied content and capable of being transmitted;
- human or fictional or symbolic characters;
- persons or groups devoted to artistic activities; and
- promotional advertising: a novel, or an unprotected operation mechanism intended to promote a product or offer a good or service with the additional incentive of providing the general public with the option to acquire another good or service on more favourable conditions than those generally encountered on the market.
Usual commercial advertisements shall be excluded from the foregoing. Contrary to copyright, reservation of rights is recognised by the law by means of registration. The term of protection is variable: one year (renewable) in the case of titles of newspapers, journals, magazines and TV and radio shows broadcast on a regular basis; five years (renewable) for the names of fictional characters; and five years (non-renewable) for original advertising campaigns.
ix Neighbouring rights
Rights in favour of performers, producers of phonograms (sound recordings) and videos, book editors, and broadcasting organisations are also acknowledged by the Federal Copyright Law; they are collectively known as related rights.
Related rights provide exclusivity rights to:
- performances, including the right to oppose the fixing of the performance on tangible media, the reproduction of any such fixation and the public communication or broadcast of fixed performances;
- book editors to oppose the reproduction of their books, regardless of whether the work is in the public domain;
- the producers of phonograms and videos to oppose the non-authorised reproduction and public communication of the phonogram and video, among other rights; and
- broadcasting entities to oppose the retransmission, fixing, public communication and reproduction of the broadcast material.
The statute provides that related rights are fully protected without registration. However, related rights concerning books, phonograms and videos may be registered with the Copyright Registry.
The protection term varies depending on the specific right: for book editions, videos and broadcastings, the term is 50 years from the date of the first edition, fixing or broadcast, respectively; for performers and phonogram producers, the term is 75 years from the date of first fixing of the performance or the first fixing of sounds, respectively.
ii RECENT DEVELOPMENTS
On 1 June 2016, the IPL was amended to clearly establish that final resolutions related to administrative decisions, such as those defining infringement or nullity of patents, utility models, designs and trademarks, as well as those modifying their conditions and scope, shall be included in the Official Gazette the following month after the decisions are issued. The relevance of this amendment is that publication provides for enforceability against third parties other than only those parties involved in the administrative procedure the day after publication takes place.
A bill directed to modify the current law regarding appellations of origin, industrial designs and patents is currently pending. The bill has passed the Senate and is waiting for final approval by the House of Representatives. If passed, among other dispositions, the bill would open protection to geographical indications in general and not only to appellations of origins. In parallel, the legal framework for designs would be aligned to be compatible with the Hague System, and the time required for processing third-party observations regarding patent applications would be shortened.
ii Court opinions
Fixed term for patents
On 4 September 2015, the Supreme Court ruled that the fact that NAFTA contemplates that contracting parties may provide for patent term extensions does not invalidate the current local statute establishing a fixed 20-year term. According to the ruling, NAFTA leaves to each of the parties the discretion to allow extensions. Therefore, Mexico continues with its policy of not allowing patent term extensions under any circumstance.
Linkage system for pharmaceutical products (2010–2017)
The most important patent decision in recent times was issued on January 2010 by the Supreme Court on the linkage system between the MIIP and the regulatory agency in charge of marketing approvals for medicaments – the Federal Commission for Protection against Sanitary Risks (COFEPRIS).
The linkage system was established in 2003 to coordinate the MIIP and COFEPRIS. Under the system, the MIIP periodically issues the Linkage Gazette listing those patents in force covering allopathic medicines. The MIIP initiated the Gazette editions by listing only patents covering active ingredients. Pharmaceutical composition patents and patents covering ‘uses’ were not included because of a narrowed interpretation from the MIIP. Process patents have been expressly excluded from participating in the system from the very beginning.
A series of constitutional appeals (amparos) were interposed against the MIIP’s interpretation before federal circuit courts, resulting in contradictory rulings. The Supreme Court intervened to clarify the issue ruling that patents covering pharmaceutical compositions (product patents) qualify for listing in the Gazette.
Currently, it is sufficient that a petition is filed for a composition patent to be listed in the gazette, although patents covering use claims (usually Swiss-style claims, or compound or composition-for-use claims) still need to undergo constitutional appeals because the Supreme Court did not unequivocally address this type of patent in its decision. These patents covering use claims are eventually ordered to be listed by federal circuit courts mainly under an interpretation of the same Supreme Court decision.
A subsequent decision related to the linkage system was ruled by one of the lower courts on 25 May 2017, through which it was stated that patents qualifying to be included in the linkage system should be listed in the linkage gazette ex officio instead of being requested to be listed by patent owners as in practice happens with formulation or composition patents.
Term for filing divisional applications clarified
Divisional applications have been acceptable by the MIIP if they were filed before the date of allowance of the first patent application. However, in May 2016, a federal circuit court ruled that division can take place any time after filing of the parent case, because neither the IPL nor the Paris Convention establishes a specific term for filing divisional applications. Accordingly, even if the MIIP can still at first instance object to a divisional application submitted after the date of allowance of the corresponding parent application, such objection can be reversed in litigation by invoking this new federal circuit decision.
Doctrine of equivalents applied
In November 2016, a federal circuit court issued an unprecedented decision related to patent claim construction under Mexican law. Mexico has a tradition of literal claim construction when assessing claim infringement. However, the court stated that there was room in the domestic legal framework for applying a broader interpretation of patent claims, such as that provided by the doctrine of equivalents, not only to enhance legal certainty for patent owners, but also to harmonise the local patent practice with international trends such as those from the United States and Europe.
Design protection enforced against unauthorised importation
In March 2017, a federal circuit court ruled that even if the local law does not specifically list the unauthorised importation of a product covered by an industrial design registration as an infringement activity, such an importation constitutes unfair competition against the registration owner and is therefore subject to the same penalty as any other infringement activity under the law.
Lack of formalities cared
In November 2017, a federal circuit court ruled that the current regulations stating that lack of compliance with some formalities after determined time without previous warning from the MIIP causes a patent application to become abandoned is unconstitutional because it violates hearing rights. Accordingly, a lack of compliance with formalities within the established legal time, for example, filing the certified copy of the priority document within three months of filing an application, should not automatically derive in an application being declared abandoned.
iii OBTAINING PROTECTION
Essential requirements for obtaining patents in Mexico are discussed in Section I.i. However, it should be also taken into account that by statute the following matter is not considered to be an invention: theoretical or scientific principles; discoveries that consist of publishing or revealing something that already existed in nature, although previously unknown by man; schemes, plans, rules and methods for performing games or businesses; mathematical methods; computer programs; information presentation forms; aesthetic creations and artistic or literary works; surgical treatment; therapeutic or diagnostic methods applicable to the human body and those related to animals; the juxtaposition of known inventions or mixtures of known products, their variation or form, dimensions or materials, except when their combination or fusion is actually involved in such a way that they cannot function separately or their characteristic qualities of functions are modified to obtain an industrial result that is not obvious to an expert in the matter.
Moreover, the following matter is specifically excluded from patent protection: essential biological processes for obtaining, reproducing and propagating plants and animals; biological and genetic material such as is found in nature; animal breeds; the human body and the living matter constituting it.
iv ENFORCEMENT OF RIGHTS
i Possible venues for enforcement
Patent rights are enforced first via an administrative infringement action filed at the MIIP acting as a first instance.
Since 2009, the Federal Trial Court on Tax and Administrative Matters (FTCTAM) has had a specialised chamber dealing with IP matters. This chamber acts as a second instance for appeals in IP cases.
There is a third and final instance for appeal before a federal circuit court by means of a constitutional appeal (amparo).
Only in exceptional cases would the Supreme Court intervene in this type of case (patents).
ii Requirements for jurisdiction and venue
Although the MIIP has regional offices across the country, contentious cases are all solved in its main office in Mexico City. Accordingly, both patent infringement and patent nullification actions are held therein.
iii Obtaining relevant evidence of infringement and discovery
The plaintiff at the time of submitting the complaint must add all the evidence that supports its claim. The same applies for the defendant submitting his or her response to the action. Evidence will not be accepted afterwards unless dated after the complaint filing date or, if dated before, if it is declared under oath that it was unknown to the party submitting it.
iv Trial decision-maker
At the first instance, internal lawyers and experts in the relevant technical field compose the MIIP’s contentious department rendering decisions. At the second instance, the specialised IP chamber is integrated by three magistrates. At the third instance, the decision is rendered by a judge.
v Structure of the trial
There are some pre-action procedures to obtain information regarding the alleged infringers. According to the IPL, the MIIP may verify the compliance of the provisions for the infringement action by bringing the following procedures: requests for reports and information, and inspection visits.
The prosecution of a patent infringement action follows as described below:
- filing the infringement action along with all the evidence available;
- once the infringement action has been served, the defendant has 10 business days to respond along with all evidence to support its defences;
- if expert opinions are filed as evidence by the parties, the MIIP grants a discretional time to prepare the relevant opinion;
- official file is sent to the corresponding MIIP division for the infringement technical analysis;
- the MIIP grants to the parties a term to submit closing arguments; and
- the MIIP renders its decision.
Decisions rendered by the MIIP will only rule on whether the infringement took place and the defendant will be ordered to immediately stop the infringing activity and will also be fined.
Mexican law provides that a patent is infringed when the patented product is manufactured or when the patented process is carried out by a third party without the authorisation or corresponding licence of the owner. Importation of the product obtained by a patented process constitutes infringement.
If provisional measures are requested by the plaintiff, the defendant has the right to lift the same by submitting a counter bond.
Apart from submitting evidence and arguments in his or her favour during the infringement action, including expert opinions, the defendant has the right to initiate an invalidation proceeding against the relevant patent as a counterclaim within a settled legal term. If so, the MIIP shall decide both actions at the same time and will, therefore, most likely issue a sole ruling. Nullity claims instituted by the defendant after the legal term will not be deemed linked to the same process, and, thus, the claim for infringement may very well be decided upon before the nullity case is decided, and without taking the same into consideration.
Usual grounds of patent invalidation include lack of clarity or support (primarily in the claims), novelty and inventive step. Where the invalidation affects only one or some of the claims, or part of a claim, invalidation shall be declared only in respect of the relevant claim, or the relevant part of a claim. Invalidation may be declared in the form of a limitation or specification of the corresponding claim. The patent claims cannot be amended during an invalidation action.
When a patent has been invalidated by means of a decision rendered by the MIIP, the relevant patent holder may appeal it before the FTCTAM.
viii Time to first-level decision
The procedure at the MIIP usually takes about 18 months, although there is no obligation for the MIIP to decide within this time; especially when a patent invalidation proceeding is interposed and expert opinions are submitted in one or both of the infringement and invalidation actions.
Provisional measures are available in Mexico that range from the seizure of merchandise or materials used to produce infringing products, to the issuance of restrictive orders; and they are in force until a decision is rendered by the MIIP. The requirements are a bond to guarantee the defendant against the possible damages caused by the application of the provisional measures and prove that it has made public the fact that the product is protected by a patent (i.e., the inclusion in the patented product that it is protected by a Mexican patent, or instead a public announcement in a major newspaper in Mexico).
In all infringement cases there are two different sums to be paid: a fine that is determined by the MIIP in its final decision (up to about US$120,000) and is kept by the Mexican government, and damages that may be collected by the plaintiff (once the case has raised res judicata). For this purpose, it would be necessary to initiate a separate judicial action, in this case a civil procedure.
If the MIIP declares the administrative infringement, after hearing the parties, this authority would decide the fate of seized products, if any.
On the other hand, the MIIP provides that compensation or indemnification for damages derived from the violation of the rights shall in no case be less than 40 per cent of the public sale price of each relevant product or the price of the rendered service. Such damages must be collected in a separate civil action. It is worth noting that contrary to copyright cases, for patent matters civil actions cannot be initiated before the infringement action initiated at the MIIP becomes res judicata.
x Appellate review
After the first instance trial, 30 business days are provided to appeal the MIIP’s resolutions, and after the second instance trial is decided, there are 15 business days to appeal FTCTAM’s judgments at a federal circuit court via an amparo appeal.
It is important to mention that there are no hearings in these procedures. All arguments have to be submitted in writing when filing the appeal or when filing the relevant response. Moreover, there are no de novo hearings under Mexican law. According to the Federal Law of Administrative Procedure, the FTCTAM may analyse and decide on the formal and substantive grounds of each case.
The FTCTAM takes approximately five months to render a decision once the closing arguments have been filed. A federal circuit court takes around five months to rule once the relevant magistrate has been elected to resolve the case.
xi Alternatives to litigation
The parties may settle at any time before and during the prosecution of the infringement action. Although not commonly used, the parties may choose to undergo an arbitration procedure for solving their disputes.
v TRENDS AND OUTLOOK
Mexico continues to sign international agreements to align its internal regulations and practices with international practices. Mexico has been very active in implementing patent prosecution highway (PPH) programmes for accelerated patent examination. PPH programmes are currently available in the following jurisdictions: Austria, Canada, China, Japan, Korea, Singapore, Spain, the United States, the European Patent Office, Colombia, Peru, Chile and Portugal.
Mexico was one of the 12 signatory parties to the Trans-Pacific Partnership Agreement, which was not ratified and did not enter into force following the United States’ withdrawal in January 2017. The remaining 11 countries managed to reach a compromise and are about to sign what is now called the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), or TPP11, which is based on the final text of the TPP, and therefore contains a relevant IP chapter.
Moreover, renegotiation talks are currently taking place to update NAFTA and the free trade agreement between Mexico and the European Union, both comprising important IP-related dispositions, the modification of which may impact the current local IP scenario.
1 Victor Garrido is head of patents at Dumont.