Mexico, D.F., Monterrey, Nuevo Leon and Guadalajara, JaliscoE-mail: [email protected]: www.clarkemodet.com
PATENTS
SUMMARY
Kinds of Patents
– National Patent
Duration of Patents
– 20 years from filing date
Patentable / Not Patentable
– Novelty, inventive step and susceptibility to industrial application.– The exceptions of Rule 39 of the PCT apply; also not patentable are computer programs
– Paris Convention 1883–1967;– Hague Convention Abolishing the Requirement of Legalization for Foreign Public
Documents 1961 (effective for Mexico as from 14 August 1995);– Convention Establishing the World Intellectual Property Organization (WIPO Convention)
1967;– Patent Cooperation Treaty (PCT) 1970, in force for Mexico as from 1 January 1995;– North America Free Trade Agreement (NAFTA) in force as from 1 January 1994;– Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade
in Counterfeit Goods (TRIPS), in force as from 1 January 1995;– Free Trade Agreement executed with Costa Rica, in force as from 10 January 1995;– Free Trade Agreement executed with Colombia and Venezuela, in force as from
10 January 1995;– Free Trade Agreement executed with Bolivia, in force as from 10 January 1995.
Laws
– Law of Industrial Property (formerly Law on the Promotion and Protection of IndustrialProperty) of 25 June 1991, effective as from 28 June 1991, and amended by decree of13 July 1994 effective as from 1 October 1994, and lastly modified by decree of26 January 2006 effective as from 27 January 2007, covering patents, utility models,industrial designs, drawings and models, and lay-out designs of integrated circuits, tradesecrets, marks, appellations of origin, advertising slogans and trade names;
– Regulations to the Law of Industrial Property of 18 November 1994 (effective as from8 December 1994);
– Resolution of the Director General of the MIIP, establishing the Rules for filingapplications before the MIIP (in force as from 15 December 1994);
– Resolution of the Director General of the MIIP, establishing the Tariff for the Servicesrendered by the MIIP (last modification on 10 August 2009).
Kinds of Patents
– National Patent– Utility model (see further the separate section ‘Utility Models’).
Duration of Patents
National patent: twenty years from the date of filing, subject to the payment of maintenancefees; not extendible; this twenty-year duration applies to patents granted after 28 June 1991.
The duration of patents and of certificates of invention granted under the amended formerLaw on Inventions and Marks as applicable between 17 January 1987 and 27 June 1991 wasfourteen years from the date of grant (subject to the payment of maintenance fees), noextensions being obtainable. The ‘date of grant’ of a patent in this context is the date ofpayment of the required final fees. (However, the ‘legal date’ of a patent granted under theformer Law is the date of filing of the relevant application.)
Under the unamended former Law of Inventions and Marks, as in force from 11 February1976, until 16 January 1987, the maximum duration of a patent and of a certificate of invention
was ten years from the date of grant. Patents and certificates of invention granted during saidperiod, as well as patents and certificates of invention granted after 17 January 1987, onapplications filed before that date where applicant was notified before 17 January 1987, topay the fees for the issuance of the patent (or certificate of invention) and to submit thetype-plates for publication, will still have a duration of ten years from grant.
Supplementary protection certificate
No supplementary protection certificate is provided for; however, the duration of patentsgranted between 28 June 1991 and 30 September 1994 relating to pharmaceutical chemicalsor pharmaceutical products or to processes for obtaining these could be extended with threeyears, provided that the owner thereof had granted a license for the use of the invention toany legal entity the majority of whose capital is controlled by Mexican parties. Said licensemust comply with the following:
(1) it must have been granted within six months from the grant of the patent or from the dateon which the competent authority grants the health registration for the distribution of theproduct concerned in Mexico (whichever occurs later);
(2) it must have been registered with the MIIP;(3) its term must be from its grant for the entire duration of the patent including the three-year
extension;(4) it must be irrevocable and non-exclusive, and its assignment to a third party may only
be possible with the authorization of the owner of the patent; and(5) it must be subject to cancellation if the licensee does not work the patented invention in
the manner agreed upon; this possible extension has been repealed by the 1994amendments.
Patentable / Not Patentable
The present Law defines an invention as any human creation which allows matter or energyexisting in nature to be transformed for use by man, through the immediate satisfaction of aspecific need; inventions include processes and products having industrial utility. To bepatentable an invention must be new, be the result of inventive activity (i.e., involve an‘inventive step’) and be susceptible of industrial application. As ‘inventive activity’ isconsidered a creative process, the results of which are not obviously deducible from the stateof the art by a person skilled in the art of the relevant field. An invention is susceptible ofindustrial application if it can be used or produced in any type of economic activity.
The following are not considered inventions and therefore cannot be patented:
(1) Theoretical or scientific principles.(2) Discoveries consisting in making known or disclosing something that existed already in
nature, even if previously unknown to man.(3) Schemes, plans, rules and methods for carrying out mental processes, playing games or
doing business and mathematical methods.(4) Computer programs or software.(5) The presentation of information.(6) Aesthetic creations and artistic or literary works.(7) Methods of surgical or therapeutic treatment or diagnostic treatment applicable to the
human body, as well as such methods applicable to animals.(8) The juxtaposition of known inventions or mixtures of known products, or the alteration
of the use, form, dimensions or materials of the same, except where there is actually acombination or amalgamation of such kind that they cannot function separately or where
their characteristic qualities or functions have been so modified as to produce an industrialresult or use not obvious to a person skilled in the art of the relevant field.
Furthermore, the following are not patentable:
(9) Plant varieties.(10) Animal species and breeds.(11) Essentially, biological processes for obtaining or reproducing plants, animals or varieties
thereof, including genetic processes or processes related to material which is capable ofself-duplication, either by itself or in any other indirect manner, when they consist simplyin selecting or isolating available biological material and allowing it to act under naturalconditions.
(12) Biological material as found in nature.(13) Genetic material as found in nature.(14) The human body and its living components.
Chemical compositions
Chemical products are patentable.
Pharmaceuticals
Pharmaceuticals are patentable.
Second use
The new use of a product already known per se may be patented.The first medical or veterinary use of a substance or composition already known per se
may be patented. It is not clear in the Law whether the second or a subsequent medical useof a substance or composition already known for use in the treatment of another disease maybe patentable, but it would appear that the MIIP might accept second medical use andtherapeutic method claims when made in the so-called ‘Swiss form’ (i.e., the form ‘Use of asubstance (or composition) X … for the manufacture of a medicine for the treatment of diseaseY …’).
Biological materials
Microbiological processes and the products of such processes and micro-organisms as suchmay be patented.
Genes as such obtained through molecular biology or genetic engineering may be patented.
Plant varieties
Transgenic plants may be patentable.Plant varieties (vegetable varieties) since 1 October 1994 are not patentable. Special
legislation provided for the protection of plant varieties is in force since 26 October 1996,administered by the Ministry of Agriculture, Animal Husbandry and Rural Development.
From 1 October 1994 to 26 October 1996, the applications related to plant varieties werestored at the MIIP, without any study and the Institute forwarded these applications to theauthority in charge of administering the new legislation.
Animal varietiesTransgenic animals may be patentable.
Software-related inventions
Computer programs as such are unpatentable, but may be protected under Mexican Copyrightlaw. As from 9 October 1984, duly filed applications for the registration of a computer programare accepted by the Copyright Registry (the ‘Dirección General del Derecho de Autor’). Theprotection of computer programs is in principle similar to the protection conferred by theCopyright law for artistic and literary works. (So, for instance, the protection for a computerprogram in the case of the author being a natural person will last for his/her life and untilseventy-five years after his/her death, and the same actions will be available in case ofinfringement of a registered computer program as are available in case of infringement of anartistic or literary work.) On filing the application for copyright registration a single fee willbe due. Registration is not compulsory, but strongly recommended. Mexico is a member ofboth the Berne Convention for the Protection of Literary and Artistic Works (as revised atParis in 1971) and the Universal Copyright Convention (as revised at Paris in 1971).
Semiconductors
The amendment to the Law of Industrial Property dated 26 December 1997, which is effectivesince 1 January 1998 incorporates the protection of lay-out designs of integrated circuits.
Novelty
Not comprised in the state of the art on the filing date or, if priority is claimed, on the prioritydate. The state of the art is deemed to comprise all technical knowledge having been madeavailable to the public in Mexico or anywhere else in the world by oral or written description,by use or by any other means of dissemination of information. Furthermore, the state of theart is deemed to comprise:
(i) the contents of earlier patent and utility model applications filed in Mexico before thefiling date (or before the priority date, where applicable), but published after the filingor priority date; as well as,
(ii) the contents of earlier international patent and utility model applications filed under thePCT and designating Mexico before the filing date (or before the priority date, whereapplicable), provided that the national phase of such applications in Mexico has beenproperly entered into. (The contents of earlier applications which are published after thefiling or priority date are to be considered in determining the novelty of the invention,but not in deciding whether the invention involves an ‘inventive step’.)
Absolute novelty
Absolute novelty is compulsory in Mexico.
Bar to novelty
Not considered a bar to novelty are:
(1) Disclosure of the invention within twelve months prior to the filing date (or, if priorityis claimed, within twelve months prior to the priority date) by the inventor or his/her
assignee by any means of communication, except the publication of the invention by anyPatent Office in the world, and the requirement is to provide that documentary evidenceas prescribed is to be furnished on filing the application.
(2) Disclosure of the invention within twelve months prior to the filing (or priority) date bydisplay of the invention by the inventor or his/her assignee at an officially recognizednational or international exhibition, provided that documentary evidence as prescribedis furnished when filing the application.
Under the former Law as applicable until 27 June 1991, an invention would be new if it hadnot been made available to the public in Mexico or abroad by means of a written or oraldescription, by use or by any other means sufficient to permit the execution of the invention,before the date of filing of the patent application or the priority date validly claimed in respectthereof. Where the first disclosure of the invention resulted from the display of the same atan officially recognized international exhibition, under the former Law a patent could beapplied for within four months from the closure of the exhibition, provided that a specification(with drawings) of the invention was filed with the Mexican patent authority prior to the saiddisplay of the invention.
Assignment
Any assignment or transfer of the rights conferred by a patent shall only be effective againstthird parties upon registration with the MIIP.
In the case of a worldwide assignment filed in the country of origin for patent matters acopy of the assignment document, certified by the corresponding Patent Office in that countryand legalized by Consul of Mexico or by an Apostille will be accepted for registration in theMIIP. In many countries the Mexican Consul may directly legalize the signature of thecertifying Patent Office officer without need of further intermediate legalization. As statedabove, certification by ‘Apostille’ provided for in the Hague Convention Abolishing theRequirement of Legalization for Foreign Public Documents of 1961 is accepted instead ofthe consular legalization for documents emanating from a country party of that Convention.Before filing: non-legalized deed of assignment, signed by the inventor and two witnesses(the full name and address of each witness to be typed under the signature concerned).
Assignment during the pendency of the application
If the assignment is made by the inventor, a non-legalized deed is sufficient, signed by theinventor and two witnesses (the full name and address of each witness to be typed under thesignature concerned). If the assignor is a legal entity, a deed of assignment, signed by assignor,notarized and legalized up to Mexican Consul is necessary; in the case of documents emanatingfrom a country party to the Hague Convention Abolishing the Requirement of Legalizationfor Foreign Public Documents of 1961, certification by ‘Apostille’ under that Conventionsubsequent to notarization will be sufficient, no consular legalization in such case beingrequired.
A power of attorney, signed by assignee, and either: (i) if assignee is an individual, signedby two witnesses (the full name and address of each witness to be typed under the signatureconcerned); or (ii) if assignee is a legal entity, notarized and legalized up to Mexican Consulor, where applicable, certified by ‘Apostille’ under the said Hague Convention of 1961 is alsonecessary.
Assignment after filing or grant
Assignment deed, Power of attorney, signed by assignee (may be inserted in the assignmentdeed) and the patent certificate (optional). The assignment deed must comprise a consideration,which, however, may be a nominal one (e.g., MXP 1,000).
The inventor or his/her successor in title (individual, body corporate, etc.) has the right to thepatent. In case the inventor assigns the invention, the right to patent is of the inventor’sassignee.
If two or more persons have made the same invention independently of each other, the rightto the patent will belong to the one whose application has the earliest filing or priority date.Inventions made by any person who supplies services under a contract of employment or inthe course of a working relationship shall be governed by the provisions of the Federal LabourLaw.
Requirements for Filing
Appointment of an agent (preferably a patent attorney) and an address for service in Mexicois compulsory for foreign applicants.
Power of Attorney / Designation of inventor / Other documents
It must be signed by applicant (may be filed within two months from receiving the officialrequirement, which period may be automatically extended with two further months providedthe required fees are paid). If applicant is an individual, his/her signature must be attested bytwo witnesses (the full name and address of each witness are to be typed under the signatureconcerned). If applicant is a company, the signature must be certified (on a prescribed form)by a Notary Public, certifying that the company is legally organized, certifying the corporateobject of the same, and certifying that the persons signing the power are duly authorized; thesignature of the Notary Public must be legalized by a Mexican Consul in the country of originor, for a power of attorney emanating from a country party to the Hague Convention Abolishingthe Requirement of Consular Legalization for Foreign Public Documents of 1961, certifiedby an ‘Apostille’ as provided for in that Convention; legalizations and certifications in foreignlanguages must be translated into Spanish.
Powers of attorney granted by legal entities, in countries which are members of the Protocolon Uniformity of Powers of Attorney which are to be utilized abroad, or of the Inter-AmericanConvention on the Legal System of Powers of Attorney to be Utilized Abroad (Organizationof American States), must meet the requirements of said Conventions. In powers of attorneygranted by legal entities in other countries, the Notary Public must clearly indicate that suchdocument meets the requirements of the home legislation.
The present Law provides that a power of attorney granted by a foreign body corporatemust comply with the applicable laws of the place where it is granted or with the applicableinternational treaties. If in a power granted by a foreign body corporate its legal existence andthe right of the signatory to sign the power are certified, the power of attorney shall be presumedto be valid, unless the contrary is proved.
(A power of attorney granted by a company exclusively for the prosecution of a patentapplication may even be signed by the person representing the company before two witnesseswithout notarization and legalization, provided that that person states that he/she hasauthorization from the company to grant the power of attorney, and the document from whichhis/her authority derives is properly identified; however, such power cannot be used if actionagainst third parties is to be taken, and will probably not be accepted by Courts.)
For each application a separate power is required, but, if desired, a copy of a general power,certified by the MIIP, may be used for all patent, utility model, trademark and design casesof the same applicant. There is a General Registry of Powers of Attorney, where originalpowers of attorney to be used for more than one single case or certified copies thereof can berecorded. If a power of attorney has been duly recorded with said Registry, in each new caseonly a photocopy of the recorded power has to be filed together with a copy of document
showing the registration of the power of attorney. If a recorded power of attorney is to berevoked or amended, notice thereof must be given to said Registry.
The name of the inventor(s) must be indicated in the application sheet, not legalizedassignment deed, signed by the inventor(s) and two witnesses, if the applicant is not theinventor(s) (the full name and address of each witness are to be typed under the signatureconcerned).
Naming of the inventor in a Mexican patent application is compulsory. The inventor shallbe deemed to be the person who is indicated as such in the patent application. The inventorshall be entitled to be named in the patent; however, an inventor may request not to be sonamed.
Priority
Priority may be claimed on the basis of an international treaty (such as the Paris Convention)or on the basis of reciprocity; the priority term is always twelve months. (Note that Mexicois not a member of any of the Pan-American Conventions on industrial property.)
Partial priority
Partial priority is allowed and the subject claimed under this provision will have the prioritydate as the filing date in Mexico and during the novelty examination, it will be studied againstthe prior art before the filing date in Mexico.
Allowable language(s) upon filing / Language(s) of procedure
Application, in Spanish and in duplicate; stating name, address and nationality of the inventor,and name, address and nationality of the applicant if not the inventor; and indicating title ofthe invention; may be filled in and signed by the patent agent; one of the copies of theapplication is returned as a filing certificate.
Description
Specification in Spanish, in duplicate (third copy for agent’s file), in black ink, double spaced,bearing the title of the invention (which should be descriptive), each copy on strong 36 g Bondwhite paper of a size of either international size A4 (210 mm × 297 mm) or of size letter(215 mm × 280 mm), with a margin of 2 to 4 cm. Every fifth line must be numbered. Thespecification must be sufficiently clear and complete so as to enable a person of normal skillin the relevant field to fully understand it (insufficiency of disclosure is a ground fornullification); it must contain a statement of the best method for working the invention knownto applicant (where not already clear from the specification of the invention).
The sheets of the specification must be consecutively numbered. The claims must beginon a new sheet and are to be numbered consecutively. Each claim should depend on thepreceding claims. Claims should have no reference back to the description or drawings.
For inventions in the microbiological field where sufficient description otherwise is notpossible, a culture of the micro-organism concerned must be deposited before or on the filingor priority date with a depository institution recognized by the Institute, and a receipt evidencingsuch deposit must be filed on filing the application. Deposits which are made with institutionshaving the status of International Depositary Authority under the Budapest Treaty on theInternational Recognition of the Deposit of Micro-organisms for the Purposes of PatentProcedure of 1977 will be acceptable (for these institutions, see Part II. ‘General SubjectMatter’, the chapter ‘Deposit of Micro-organisms (Budapest Treaty – International Depositary
Authorities)’). The specification must contain a characterization of the micro-organismconcerned.
Claims
One independent claim per each category: Device (apparatus), Composition (product/chemicalcompound), Method (process), Product by process and use claim, is permitted in Mexico inone application, as long as all the claims have unity of invention.
Priority claim
Priority must be claimed on filing the application, stating at least the country and date of thebasic application. According to the provisions of the Paris Convention multiple and partialpriorities are allowed. The claims of the application whose priority is claimed will serve todetermine the scope of the priority claimed. If the Mexican application tends to the grant ofbroader rights than covered by the claims of the basic application, the priority claimed willbe a partial one and limited to the basic application, and for the new matter included in theMexican application the filing date thereof may be claimed as priority date; on the other hand,with respect to the said new matter, a new priority may be claimed.
A priority document, i.e. a certified copy of the basic application, must be filed within threemonths from the filing date of the application in Mexico, and must be accompanied by atranslation into Spanish (if the basic application is not in that language).
Independent claims
One independent claim per category: apparatus, composition, method, product and use, ispermitted as long as all the claims have unity of invention.
Abstract
Abstract, in Spanish, in duplicate (third copy for agent’s file). The requirement that an abstractmust be filed has been introduced by the present Law as applicable since 28 June 1991. Theabstract will only be used for publication and for the purpose of technical information.
When the specification is filed, the abstract must be the last page, after the claims and ona separate, numbered sheet.
Drawings
The rules for specification also applies as to drawings each set.Drawings in triplicate, one set on 36 g white Bond paper and three copies obtained by any
desired reproducing process; size of the sheets containing the drawings must be eitherinternational size A4 (210 × 297 mm), or size letter (215 × 280 mm); the drawings should beno larger than 175 × 262 mm; the light must fall from the left at an angle of 45°; it isrecommended that the small side of the sheet is at the top and bottom. No legends are allowedin the drawings, except for those necessary to understand graphs and block diagrams. Thefigures in the drawings shall be numbered and be referenced in the specification in accordancewith the signs or figures in the drawings. Reference signs, letters or numbers should not besmaller than 3.2 mm. If more than one sheet is needed for the drawings, at least one of thesheets should have a complete drawing of the invention. Copies of drawings may be made byany reproduction method provided that the size of the sheets is the same.
It is also allowed the filling of photographs if the drawings are not sufficient to understandthe invention. For instance, photographs of microorganisms.
Secrecy of Applications (Trade Secrets, Industrial Secrets)
The present Law as in force since 28 June 1991 contains provisions relating to the protectionof trade secrets. As trade secret is considered all information susceptible of industrial orcommercial application kept by an individual or a corporate entity, being of a confidentialnature and being associated with securing or keeping a competitive or economic advantageover third parties in the conduct of economic activities, and with respect to which saidindividual or entity has adopted sufficient means or systems of preserving confidentiality andrestricting access. The information forming a trade secret shall necessarily relate to the nature,characteristics or purposes of products, to production methods or processes or to manners ormeans of distribution or marketing of products or rendering of services.
Not considered a trade secret are: (1) information being in the public domain; (2) informationbeing obvious to a person skilled in the art of the relevant field; or (3) information that mustbe disclosed under a legal provision or by a Court order. On the other hand, informationsupplied to any authority by a person possessing the same as a trade secret shall not beconsidered as falling into the public domain or as disclosed under a legal provision if it isfurnished for the purpose of obtaining licenses, permits, authorizations and registrations; thesame applies to the information disclosed in any judicial or administrative procedures (no thirdparty may use or disclose the information disclosed in such procedures).
The information forming a trade secret must be in documents, electronic or magnetic media,optical disks, microfilms, films or any other similar material (this would imply that secretskept in the mind of an individual person and transmitted orally would not be protected). Theperson who keeps a trade secret is entitled to transfer it or to authorize a third party to use it;the authorized user (licensee) of a trade secret will be obliged not to disclose the trade secretby any means. Agreements under which know-how, technical assistance or basic or detailedengineering are provided may contain confidentiality clauses to protect any trade secrets thatmay form part of such services, and such clauses shall then specify the aspects to be treatedas confidential (it could be assumed that such clauses could oblige licensee to observeconfidentiality even after termination of the agreement).
Any person who, in connection with his/her work, employment, duty, position, the practiceof his/her profession or the conduct of business relations, has access to a trade secret, theconfidentiality of which has been made known to him/her, shall refrain from disclosing suchsecret without just cause and without the consent of the person who keeps such secret or ofthe authorized user of the same. Any individual or corporate entity engaging a worker whois working or has worked for, or a professional, advisor or consultant who is rendering or hasrendered his/her services for another person or entity, with a view to obtaining trade secretsfrom him/her, will be liable for the payment of compensation for any damage caused to thatperson or entity. Any individual or corporate entity that, by any unlawful means, obtainsinformation containing a trade secret shall also be liable for the payment of compensation fordamages caused.
The confidential information required to obtain approval of any authority with regard tothe safety and effectiveness of pharmaceutical and agrichemical products shall be protectedin accordance with the international treaties signed by Mexico.
Infringing a trade secret is deemed a criminal offence punishable with imprisonment (two tosix years) and fine (from 100 to 10,000 days of the minimum wage prevailing in the FederalDistrict).
As from 1 October 1994, there is a new industrial property authority in Mexico, the MIIP,which is an autonomous government agency. This authority replaces the former Patent andTrademark Office of the Ministry of Commerce and Industrial Development.
Formal examination
Upon the filing of a patent application with the required documents, the MIIP will examinethe application documents as to form. The Institute may request that further details orclarifications be provided as it deems necessary, or that omissions be remedied. In case ofnon-compliance with such a request within a period of two months, the application shall bedeemed to have been abandoned (the two-month period may be extended once with a furthertwo months automatically, provided the required fee is paid). If the application does not meetthe formal requirements, the applicant is notified and invited to make the necessary amendmentswithin four months; if he/she fails to do so, the application shall be deemed not to have beenfiled and the applicant shall be informed accordingly. Documents filed in reply to an officeaction may not include additional claims or claims with a broader scope than those filedoriginally.
Substantive examination
After publication of the application, the Institute will carry out an examination as to novelty,inventive step and industrial applicability. For the purpose of carrying out the substantiveexamination, the Institute may request the technical support of other Mexican agencies andinstitutions. Furthermore, the Institute may accept or require the substantive examination tobe carried out by foreign examining offices.
The request for examination is made on filing the application and the fee for the examinationis included in the filing fee.
The Institute may accept or may require applicant to file copies of search reports or noveltyexamination reports prepared in respect of corresponding applications by foreign patentauthorities in other PCT member countries. The procedure may be accelerated by filing atapplicant’s own initiative for instance of the results of a search and examination relating tothe invention concerned carried out by the European Patent Office (if such search andexamination have taken place). Furthermore, a copy of a patent granted in a PCT membercountry on a corresponding application may be acceptable as proof of novelty of the invention.
(In such cases the Mexican Institute will, however, still make a local examination todetermine other possible anticipations.) Although all documents should be filed in Spanishor with Spanish translation, the Institute may accept documents in English withoutaccompanying Spanish translation.
If during substantive examination it is found that there is a possible total or partialinfringement of rights acquired by third parties, or that the invention lacks novelty or thatadditional or complementary information or documents are needed, applicant will be requestedin writing to make the respective clarifications or to submit the required information ordocuments within two months, which term may automatically be extended with another twomonths provided the required fee(s) is (are) paid. If applicant would not comply with therequest within the said term, the application will be considered abandoned.
By filing a copy of the European or US patent granted for the priority claimed in the Mexicanapplication and adopting the granted claims through a voluntary amendment along with a writit is possible to ask to speed up the results of the novelty examination.
Amendments and corrections
Before the granting notification, amendments are possible, provided they do not broaden thescope of the claims.
After grant it will only be possible to file amendments to correct evident errors or to limitthe scope of the claims. When such amendments are permitted, they will be published in theGazette.
Grant
If it is found that a patent may be granted, the applicant will be notified thereof and then mustcomply with the requirements for publication of the patent (i.e., under the presently applicableregulations: submit the type-plates necessary for publication) and pay the issuance fee withintwo months, which can be extended by two more months, failing which the application willbe considered abandoned as yet. If the requirements for publication of the patent have beencomplied with and the issuance fee been paid in due time, the patent will be granted and aLetters Patent document be issued. The patent shall be published in the Gazette. The publicationshall include: the abstract, and the principal drawing (if any); number and classification ofthe patent; name and address of the party to whom the patent is granted; name of the inventor(s)(except where the inventor(s) would have requested not to be so named); filing date, prioritydate (if any) and date of issue of the patent; title of the invention; indication of term of thepatent.
Appeal
The reconsideration appeal does currently not have any legal effect.If a patent application is refused and according to an amendment to the Federal
Administrative Procedural Law which came into force as of April 2000, a Remedy or anAppeal is available. The Remedy has to be filed within fifteen days with the MIIP or theAppeal has to be filed with the Federal Court of Fiscal and Administrative Justice withinforty-five days following the refusal notice.
Unity of invention / Divisional applications
The applications must have unity of invention; otherwise, the examiner will require dividingthe application during substantive examination.
A single patent application may contain: (a) claims relating to a particular product andclaims related to processes specially devised for its manufacture or use; (b) claims relating toa particular process and claims relating to an apparatus or means specially devised for itsapplication; or (c) claims relating to a particular product and claims relating to a processspecially devised for its manufacture and claims relating to apparatus or means speciallydevised for its application.
A patent application shall relate to one single invention or to a group of inventions so relatedto each other that they form one single inventive concept. In case of non-unity, the applicantis notified and given a term of two months for filing divisional applications, which may retain
the original filing date and, if applicable, the priority date validly claimed for the parentapplication; the two-month period may be extended automatically by another two monthsprovided the required fee(s) is (are) paid. If in this case divisional application(s) is (are) notfiled in due time, the application will be deemed abandoned.
A divisional application may also be filed voluntarily, at the own initiative of the applicantwithout an official decision of non-unity, at any time before grant.
In case of filing a divisional application, the description, claims and drawings therefor(which may not contain any alterations which would modify the invention as originallypresented) as well as the priority documents (if priority is claimed) must be submitted.
The acceptance of a divisional application filed after the parent patent application has beendefinitively decided upon (by grant or refusal of the patent), or has been abandoned, dependson the MIIP criteria.
Conversion
If it is found that the contents of a patent application are not consistent with the title ofprotection applied for, the applicant may convert the application into an application for theregistration of a utility model or for the registration of an industrial design. Conversion maybe requested (on paying the required fee) within three months from filing the application, orwithin three months from the date that the MIIP requires applicant to convert the application,provided that the application has not become abandoned. If the application is not convertedwithin the term allowed by the Institute, it will be deemed abandoned.
Publication / Public File Inspection
A pending patent application will be published in the official Industrial Property Gazette assoon as possible after expiration of eighteen months from the date of filing the application or,where priority has been claimed, after expiration of eighteen months from the recognizedpriority date (until publication of the application the file will be kept confidential). Thepublication in the Gazette includes the abstract and the principal drawing (if any). Applicantmay request publication of the application before expiration of said eighteen-month term(publication of the application is necessary before the substantive examination of the applicationcan start); a fee is due on such request. With the publication of the application, some protectionstarts: after the patent has been granted, the owner may also claim compensation from thirdparties having worked the invention between the date of publication of the application in theGazette and the date of grant of the patent.
Until publication of the application (after expiration of eighteen months from the prioritydate, unless where early publication has been requested by applicant), the files are keptconfidential, and can only be consulted by applicant or his/her representative or by personsauthorized by applicant, except when said files are cited as anticipations to another applicant.After publication, the applications can only be consulted in the Gazette, not in the file. Thefiles relating to granted patents shall always be open for every type of consultation and foruse in filing submissions.
Specifications are not printed, but the abstract and the essential particulars of a patent arepublished in the official Industrial Property Gazette. However, some applications are foundin the espacenet website.
Nullity and Lapse
Nullification of a granted patent may be requested within five years from the effective dateof the publication of the granted patent in the Gazette when it appears that the patent applicationwas abandoned or on the ground that the patent was granted in error or inadvertence.
Nullification of a patent granted in violation of the Law or of the Law in force when the patentwas granted may be requested at any time.
Patents shall lapse and the rights they confer will become public property under the followingcircumstances:
(1) on expiration of their term;(2) when the fees provided for the maintenance of the rights therein are not paid, or are not
paid within the six-month period of grace following the said expiration;(3) in the case provided for in Article 73 of this Law (Article 73: On expiration of a period
of two years following the date of grant of the first compulsory license, the Institute mayadministratively declare the patent lapsed if the grant of the compulsory license has notremedied the non-working thereof, or if the patent owner has not proved the workingthereof or the existence of reason that are justified in the opinion of the Institute).
The payment of royalties under a compulsory license shall end when the patent lapses or isinvalidated, or for any other reason provided for in this Law.
Lapse due solely to the passage of time shall not require an administrative declaration onthe part of the Institute.
Whenever a patent has been granted in contravention of the legal provisions (e.g., whenthe invention was not novel or was otherwise unpatentable), the MIIP may issue a declarationof nullity, either ex officio, at the request of any third party or (where an interest of the Stateis involved) at the request of the Federal Public Prosecutor. Nullification on this ground maybe requested at any time. Also on the ground that the patent was otherwise granted in violationof the applicable Law on the date of grant, nullification may be requested at any time (butnullification request based on deficiencies in the power of attorney used for prosecution isnot admitted). On the ground that the application became abandoned during prosecution, orthat the grant of the patent was due to inadvertence or error, nullification may be requestedduring five years from the date of publication of the grant. The nullification of a patent shallhave a retroactive effect as from the date of filing of the relevant patent application.
Declarations concerning the nullification or cancellation of the registration of a right of use(as well as of a general declaration of protection) shall be made by the MIIP ex officio, or atthe request of the Federal Public Prosecutor, or at the request of any interested party.
Renunciation
Renunciation is a form to finish an administrative procedure (cancellation, nullity and/orinfringement proceedings), which must be accepted by the defendant. Such acceptance wouldnot be necessary when the renunciation is filed before the Authority notifies the Cancellation,Nullity and/or infringement Action to the defendant.
Use Requirement
Under the present Law a patent must be sufficiently worked, within Mexico, within threeyears from grant of the patent or within four years from the date of filing the application,whichever period ends last. Working by a recorded licensee of a contractual license will bedeemed working by the owner of the patent (but not the working by an unrecorded licenseeor by the grantee of a compulsory license). Working consists in utilization of the patentedprocess, the manufacture and distribution of the patented product, or the manufacture of andtrade in the patented product, in Mexico. Failing to work a patent without justified technicalor economical reasons will make it subject to the grant of compulsory licenses. Importationis of relevance now, and there will be no grounds for grant of a compulsory license when theholder of the patent or a contractual licensee has been importing the patented product or theproduct obtained by application of the patented process.
The provisions on working in the present Law as applicable since 28 June 1991 would seemto be basically in conformity with the Paris Convention.
Notwithstanding the foregoing, it is still recommended, in case of non-working, to file adeclaration giving justifying reasons for non-working in order to prevent the lapse of thepatent. Such declaration giving economic, industrial or financial reasons for the non-workingcould be accepted by the MIIP during the third and fourth year from grant.
It is noted that certificates of invention are not subject to the working requirements.
Marking
The present amended Law as in force since 1 October 1994 provides that civil and criminalactions may not be brought if the products were not marked with the legends ‘Patentado’, or(before grant, during pendency of the application) ‘Patente en Tramite’ or ‘Patent Pending’.In case of an article protected by a certificate of invention, utility model or industrial designthe marking should read ‘Registrado’.
If it is not practicable to use the marking on the articles, the required indications shouldappear on the containers or packaging of the articles.
False marking is considered an administrative offence punishable with fine (up to 20,000times the general minimum wage prevailing in the Federal District, and, additionally, up to500 times said general minimum for each day that the offence continues), temporary closureof the enterprise concerned for up to ninety days, permanent closure of the enterprise concerned,and administrative detention for up to thirty-six hours. A second or further offence after thefirst penalty for such offence as an administrative offence has been levied is deemed a criminaloffence, punishable with imprisonment (two to six years) and fine (from 100 to 10,000 daysof the minimum wage prevailing in the Federal District). In the case of a patent that has lapsedor been nullified, the marking will be false when one year from the date of the lapse or thedate that the nullification became final has expired.
Licenses
A license agreement must be recorded with the MIIP in order to be effective against thirdparties. A license agreement will not be recorded if: (a) the patent concerned has alreadylapsed; (b) the duration of the license would exceed the duration of the licensed patent.
The recordal of a license may be cancelled:
(1) when requested jointly by the owner of the patent and the licensee;(2) as a result of the nullification or lapse of the patent; and(3) by order of a Court.
The working of the patent by the person to whom a license has been granted and registeredwith the Institute shall be considered done by the patent owner, except in the case of compulsorylicense.
Exclusive and non-exclusive licenses under a patent may be granted.
Compulsory license
Compulsory licenses may be granted in the following cases:
(1) Non-working cases: If a patent has not been worked without justified technical oreconomical reasons within three years from grant or within four years from filing theapplication, whichever period ends last, any person may apply to the MIIP for the grantof a compulsory license. Persons applying for the grant of a compulsory license musthave the technical and economic capacity to work the patented invention efficiently.
Before granting the first compulsory license, the Institute will give the owner of thepatent an opportunity to work the patent within one year from the date of personalnotification given to him/her. Prior to granting a compulsory license the parties will begiven an opportunity to be heard. If a compulsory license is applied for in respect of apatent under which a license has been granted, the licensee will be notified and given anopportunity to be heard.When the grant is decided upon, the Institute will establish the duration, conditions, fieldof application and amount of royalties to be paid to the owner of the patent. The conditionsof a compulsory license may be amended by the Institute at the request of the owner ofthe patent or the grantee of the compulsory license, if changes in the relevantcircumstances would justify this (in particular when the owner of the patent would havegranted a contractual license on more favourable conditions).If the owner of the patent would not prove the working of the patented invention or theexistence of a justified reason for non-working within two years from the grant of thefirst compulsory license, the MIIP may declare the lapse of the patent. The grantee of acompulsory license must start working the patent within two years from the grant of thelicense; if working has not been so started without justified reasons, the compulsorylicense may be revoked ex officio or at the request of the owner of the patent.A compulsory license in case of non-working is not exclusive; such license may only beassigned with the authorization of the MIIP and provided that it is then assigned togetherwith that part of the business in which the patent concerned is worked.
(2) Public interest cases: The MIIP may, for reasons of national emergency or security andfor such period as those reasons exist, in a declaration published in the Official Daily ofthe Federation, determine that certain patents may be worked by means of the grant ofpublic utility licenses where, if such use is not made, the production, supply or distributionof basic commodities to the public would be prevented, hindered or made more expensive.Any such license will be non-exclusive and cannot be assigned.
Infringement
The grant of a patent confers upon the patentee an exclusive right to work the invention; i.e.,to use the patented process or to manufacture, import and distribute or to manufacture andmarket the patented product in Mexico, either by himself/herself or through any other personacting with his/her consent. The scope of the protection shall be determined according to thewording of the claims. The specification and drawings (and, in case of biological inventions,the deposit of biological material) will be used to interpret the contents of the claims.
The following are considered patent infringement:
(1) causing to appear as patented goods that are not. If the patent has lapsed or been declaredinvalid there shall be infringement after one year following the date of lapse or, whereapplicable, the date on which the declaration of invalidity became effective;
(2) manufacturing or developing goods covered by a patent without the consent of the ownerof the patent and without the appropriate license;
(3) offering for sale or bringing into circulation goods covered by a patent in the knowledgethat they have been manufactured or developed without the consent of the owner of thepatent or without the appropriate license;
(4) using a patented processes without the consent of the owner of the patent or without theappropriate license; and
(5) offering for sale or bringing into circulation goods that are the result of the use of patentedprocesses in the knowledge that they have been used without the consent of the ownerof the patent or of the person who holds an exploitation license.
The protection conferred by a patent for a process extends to the products obtained by theprocess. In case of infringement actions relating to a process patent, the burden of proof that
the goods concerned were manufactured through a process other than the patented process isupon the defendant.
The following acts are not considered patent infringement:
(1) Producing or using a product or process identical to a patented product or process whenperforming scientific or technological research activities for purely experimental, testingor teaching purposes made in the private or academic field and for non-commercialpurposes.
(2) Marketing, acquiring or using a patented product or a product obtained by applicationof a patented process after such product has been lawfully brought into the market inMexico (note, that under the amended law the exclusive rights granted by a patent to thepatentee include the right to import into Mexico the patented products or the productsobtained through the patented process, so that parallel imports of such products isprohibited now).
(3) Acts done by a person acting within the limits of his/her prior user’s right (see above,‘Prior use’).
(4) Use of a patented invention in transportation vehicles of other countries when it formspart of such vehicles, when such vehicles are in transit in the Mexican territory only.
(5) In the case of a patent relating to living matter, using the patented product as an initialsource of variation or propagation to obtain other products, unless such use was madepreviously.
(6) In the case of a patent relating to products of living matter, using, putting into the tradeor marketing the patented products for purposes other than multiplication or propagation,after said products have been legally brought into the trade by the patent owner or alicensee.
In case of infringement the owner of the patent is entitled to claim damages. The licenseewhose license has been duly recorded is entitled to take infringement action on his/her own,unless agreed upon otherwise.
The Law also provides for inspections (which may be requested by any interested party)to be executed by persons authorized by the MIIP, which may also serve as a tool againstinfringement. Such inspections may be held even outside the normal business days and hours,and may be conducted in places where products are manufactured, stored, transported, soldor marketed, or where services are rendered. If during an inspection any bona fide evidenceis found of an infringement, the person executing the inspection may seize the infringinggoods and make an inventory of those goods, and notify the Federal Public Prosecutor.
Previously to the seizure of goods by the person running the inspection; will require thatthe applicant provide sufficient security to cover any damages that might be caused to theperson against whom the measure is sought.
Effect of published patent application: after a patent has been granted, the owner thereofmay bring an infringement action also against a party who has worked the invention withoutthe owner’s consent after publication of the application in the Gazette (see also above, ‘Officialprocedure’). In view thereof it may be of interest for the applicant for patent to request earlypublication of the application. It is important, in this connection, that also during pendencyof an application a proper marking is applied.
Prior user rights
Third-party rights of prior use are acknowledged; they are due to anyone who, prior to thedate of filing of the patent application in Mexico or to the validly claimed date of priority,did already manufacture the product or use the process which is the subject of the invention,or who prior to said date had made the necessary preparations for such manufacture or use.
Against the final decision of the Institute in an infringement procedure and according to theamendment to the Federal Administrative Procedural Law of April 2000, a Remedy or anAppeal is available. The Remedy has to be filed within fifteen days with the MIIP or theAppeal has to be filed with the Federal Court of Fiscal and Administrative Justice withinforty-five days following the resolution notice.
Enforcement and Customs
It is recognized the importance of border enforcement procedures that will enable right holdersto obtain the cooperation of customs administrations so as to prevent the release of infringingimports into free circulation.
The right holder lodging an application to the competent authority shall be required toprovide adequate evidence of a prima facie infringement of his/her Industrial Property Rights(IPR) and to supply a sufficiently detailed description of the goods to make them readilyrecognizable by the customs authorities. The competent authorities shall then inform theapplicant whether the application has been accepted and, if so, for what period, and give thenecessary directions to customs officers. After this, it is the responsibility of the applicant toinitiate proceedings leading to a decision on the merits of the case.
The provisions on border measures require the taking of what are essentially provisionalmeasures against imports of infringing goods. The competent authority may require theapplicant to provide a security or equivalent assurance sufficient to protect the defendant andthe competent authorities and to prevent abuse. If the right holder fails to initiate proceedingsleading to a decision on the merits of a case within ten working days, the goods shall normallybe released. Where goods involve the alleged infringement of industrial designs, patents,layout-designs or undisclosed information, the importer must be entitled to obtain their releaseon the posting of a security sufficient to protect the right holder from any infringement, evenif proceedings leading to a decision on the merits have been initiated. The applicant may berequired to pay appropriate compensation to persons whose interests have been adverselyaffected by the wrongful detention of goods or through detention of goods released pursuantto the failure of the applicant to initiate in time proceedings leading to a decision on the meritsof the case.
Restoration
The only restoration procedure available is for not paying the maintenance fee in due time.The owner of the patent has six months to pay the maintenance fee with extra charges andother six months to reinstall the protection.
Specific Aspects of International Patent Applications (PCT)
Filing of international patent applications
Mexico is a member of the Patent Cooperation Treaty (PCT) of 1970 since 1 January 1995.Consequently, as from 1 January 1995, Mexico may be designated in international applicationsfiled under the PCT, Mexico may be elected under Chapter I or II of the PCT, and internationalapplications under the PCT may be filed in Mexico by nationals and residents of Mexico.International applications filed with the Mexican Institute must be filed in triplicate, and inSpanish language (but it may be necessary to furnish a translation of the application for thepurposes of international search and/or international preliminary examination, depending
upon which competent International Searching Authority is chosen by applicant; see hereafter).In addition to the fees due under the PCT, a transmittal fee is due for each internationalapplication filed with the Mexican Institute.
If applicant is not residing in Mexico, he/she must appoint an agent in Mexico and furnisha power of attorney relating thereto within thirty months from the priority date.
If priority was claimed from an earlier application, and the applicant thereof is not the sameas the applicant of the international application, a deed of assignment of priority rights, signedby assignor, not legalized, must be filed within thirty months from the priority date.
If, where required, the agent was not appointed and the power of attorney not furnished,and/or the deed of assignment not filed, within the thirty-month time limit, the MexicanInstitute will invite applicant to comply with the requirement(s) concerned as yet within aterm fixed in the invitation.
Receiving Office
The MIIP is a competent Receiving Office under the PCT for international applications filedunder the PCT by nationals or residents of Mexico.
Translation
Within thirty months from the priority date a translation into Spanish of the internationalapplication must be filed (if not already filed in that language). The translation to be filedmust comprise the description, the claims, any text matter of the drawings, and the abstract;if the claims were amended, the translation must comprise the claims as amended only, togetherwith any explanatory statement under PCT Article 19. If the required translation is not filedwithin the time limit for entering the national phase (i.e., thirty months from the priority datefor Chapter I or II), it may still be filed during two months after expiration of that time limit,but only provided that the national filing fee has been paid and a copy of the internationalapplication has been furnished to the Mexican Institute before expiration of said thirty-monthtime limit.
International Searching Authority
The competent International Searching Authority for international applications filed with theMexican Institute may be the Spanish Patent and Trademark Office; furthermore, the SwedishPatent Office as well as the United States Patent and Trademark Office may be a competentInternational Searching Authority for international applications filed with the Mexican Institute,provided that an English translation of the application is furnished (the Swedish Patent Officeas well as the US Patent and Trademark Office will carry out an international search onthe basis of an English translation of the application); finally, the European Patent Office maybe a competent International Searching Authority for international applications filed with theMexican Institute, provided that a translation of the application into English, French or Germanis furnished (the EPO will carry out an international search on the basis of a translation of theapplication into one of these three languages).
PCT Chapter II (international preliminary examination)
Mexico is also bound by PCT Chapter II, and consequently Mexico may be elected and theMexican Institute may act as an Elected Office under PCT Chapter II. If any part ofthe international application to be comprised in the required translation has been amended,the translation must comprise such part only as amended by the annexes to the internationalpreliminary examination report.
The competent International Preliminary Examining Authority for international applicationsfiled with the Mexican Institute may be: (a) the Swedish Patent Office (the Swedish PatentOffice will carry out an international preliminary examination on the basis of an Englishtranslation of the international application, so that such translation, if not already furnished,must be furnished as yet); (b) the United States Patent and Trademark Office (only forinternational applications for which the US Office has established the international searchreport; the US Office will carry out an international preliminary examination on the basis ofan English translation of the application); or (c) the European Patent Office (for internationalapplications for which the Spanish Patent and Trademark Office, the Swedish Patent Officeor the European Patent Office has established the international search report; the EPO willcarry out an international preliminary examination on the basis of a translation of the applicationinto English, French or German, so that, if no such translation was furnished already, it mustbe furnished as yet).
Amendments and corrections
Once the applicant enters national Phase in Mexico, amendments and corrections can be madeto the application, as long as they are completely supported in the original Internationalspecification and such amendments do not give a broader scope than what was originallyclaimed.
National phase / Regional phase
Once an international application has entered national phase before the Mexican Institute, theprocedure will be the same as in the case of a national patent application. This implies that asubstantive examination of the application will be carried out without any special requesttherefor being required.
Payment of fees
Within thirty months from the priority date the national filing fee must be paid, failing whichthe international application will be without effect as far as Mexico is concerned. (The nationalfiling fee to be paid includes the examination fee.)
Fees
Table of official fees
In Mexican Pesos (MXP), as from 1 October 2010:
MXP
7,172.92Filing fee (fee for formal and novelty examination of application).....................
5,711.14Filing fee for PCT applications according to Chapter I.....................................
3,737.75Filing fee for PCT applications according to Chapter II...................................
996.28Fee for claiming a priority, each..................................................................
1,084.72Fee for early publication of application on applicant’s request...........................
277.21Fee for each amendment of any document or for furnishing additional information
(not including the amendments due to the novelty examination).....................
137.77Fee for each request for extension of a term (per month)..................................
2,911.88Final fee for issuance of patent (to be paid within two months from notification that
a patent can be granted).........................................................................
Note: The Value Added Tax, at the rate of 16%, must be added to the above-mentioned fees.
Annual fees under the new provisions as applicable from 1 September 1995 are to be paid forfive-year periods (and not, as before, each year). During pendency of the application no annualfees need be paid; with the payment of the final fees it is considered that all annuities duefrom the filing date through December 31 of the year before the date of grant are paid. Togetherwith the final fees, annual fees for five calendar years (the year in which the grant takes place,and the four following years) must be paid. Thereafter, annual fees for five-year terms are tobe paid before or on the anniversary of the filing date of the application in the years concerned.An annual fee covers a full calendar year, irrespective of the date of filing of the applicationor the date of grant. The owner of the patent may pay two or more five-year payments inadvance. The last payment of annuities may relate to less than five years, if the remainder ofthe term of the patent is less than five years.
For patents granted before 1 September 1995, the annual fees are to be paid in the monthof January but are also to be paid for five-year periods; in January 1996 a five-year term ofannuities is to be paid on such patents.
The amounts of the annual fees as from 1 October 2010 are as follows:
1,055.18The 1st through the 5th year, per year......................................(a)
1,282.78The 6th through the 10th year, per year....................................(b)
1,517.47The 11th through the 20th year, per year..................................(c)
317.37Fee for recordation of an assignment or merger...................................
317.37Fee for recordation of a license or of an amendment to a license.............
317.37Fee for recordation of a change of name of patent owner.......................
2,668.71Fee for conversion of a patent application into an application for a utility
model or for an industrial design..................................................
Further fees:
376.52An inspection executed at the request of an interested party in order to
establish matters of Industrial Property Law....................................
1,360.81Study and processing of an application for an administrative declaration
(such as a declaration of nullity)...................................................
765.77Fee for change of text or drawings of a granted patent..........................
127.64Study of an application for registration in the General Registry of Powers
of Attorney...............................................................................
Fee for search regarding information of documents in National Bank ofPatents:....................................................................................
399.93Each search of bibliographical data of patent documents (domestic
1,598.60Fee for each search on specific technical areas....................................
1,360.81Filing an application for an infringement proceeding...........................
(In force sinceOctober 2010)
486.25
The inspection visit executed by person authorized by the MIIP, to petitionof interested part, to verify the fulfilment of the legislations in matter ofindustrial property.....................................................................
(In force sinceOctober 2010)
Note: The Value Added Tax, at the rate of 16%, must be added to the above-mentioned fees.
Transitional Provisions
The following transitional provisions to the Law of Industrial Property as in force since 28 June1991 may be mentioned:
(1) The new Law has repealed the Law on Inventions and Marks of 30 December 1975,which was effective since 11 February 1976, as amended by the Law Amending andAdding to the Law on Inventions and Marks of 27 December 1986 (which was effectivesince 17 January 1987).
(2) The new Law also has repealed the Law on the Control and Registration of the Transferof Technology and the Use and Exploitation of Patents and Trademarks of 1982 as wellas the Regulations of 1990 to this Law.
(3) It will not anymore be necessary for the purpose of Article 24, section XI of the IncomeTax Law, to prove recordation at the National Registry for the Transfer of Technologyof deeds, contracts or agreements relating to technical assistance, transfer of technologyor royalties.
(4) Patents (and industrial designs and models) granted under the former Law will retain theduration as provided for by the former Law, but will be subject to the provisions of thenew Law and its Regulations.
(5) Administrative declarations which were pending on 28 June 1991 shall continue to beprocessed and will be resolved in accordance with the provisions of the old, repealedLaw on Inventions and Marks.
Specific Patent Issues
Computation of time limits. Terms established in the Law in days are to be computed on thebasis of business days. However, in the case of terms established in months or years,computation of same shall be made from date to date, including non-business days. Termsstart to run on the day following the notification concerned. Publication in the Gazette willbe effective as notification on the date indicated in the Gazette itself or, if no date is indicated,on the day following the day that the Gazette was put into circulation.
A pending administrative litigation action before the MIIP of any kind will lapse if noaction has been issued by the Institute during one year. In order to prevent such lapse a petitionshall be filed each year when no office action was issued during the preceding year, askingthe Institute to continue the prosecution of the action.
– Duration is 10 years from filing date; indefinitely renewable with further 10-year periods.
Registrable / Not Registrable
– A mark may be comprised of any visible sign: words, designs, combinations of letters,combinations of numbers, combinations of colours, three-dimensional shapes, orcombinations of them.
– At present, sound marks, fragance marks and taste marks cannot be registered.– Phrases or sentences with aim to advertise to the public, commercial, industrial, services
establishments or enterprises, or to advertise to the public, goods or services, are protectedby slogans.
Procedure
– A mark is registered after examination as to whether the subject matter of the applicationmay be registered or not and as to the identity or similarity with marks previouslyregistered.
– A mark is also examined, in connection with legal impediments established in IP Law,such as descriptiveness, among others. For further reference, see ‘Registrable / NotRegistrable’ section.
– Trade-Related Aspects of Intellectual Property Rights (TRIPS) (Annex 1C of theMarrakesh Declaration of 15 April 1994);
– Paris Convention for the Protection of Industrial Property;– Lisbon Agreement for the Protection of Appellations of Origin and their International
Registration;– Nairobi Treaty on the Protection of the Olympic Symbol;– Vienna Agreement Establishing an International Classification of the Figurative Elements
of Marks;– Nice Agreement Concerning the International Classification of goods and Services for
the Purposes of the Registration of Marks;– Trademark Law Treaty 1994 (signed, not yet ratified).
Additionally, the Industrial Property provisions and rules contained within the different treatiessigned and ratified by Mexico with other countries are applicable as law to the regulation oftrademarks within Mexican territory (NAFTA, Mexico EU Free Trade Treaty). Nevertheless,the majority of said provisions and rules do not differ from the provisions and rules set forthin all of the above-captioned Conventions and Agreements.
Laws
– Law of Industrial Property (formerly Law on the Promotion and Protection of IndustrialProperty) of 25 June 1991, effective as from 28 June 1991, and amended by decree of13 July 1994 effective as from 1 October 1994, and last modified by decree of 28 June2010, effective as from 29 June 2010, covering patents, utility models, industrial designs,drawings and models, and lay-out designs of integrated circuits, trade secrets, marks,appellations of origin, advertising slogans and trade names;
– Regulations to the Law of Industrial Property of 18 November 1994 (effective as from8 December 1994) last modification: by decree of 19 September 2003, effective as from20 September 2004;
– Resolution of the Director General of the MIIP, establishing the Rules for filingapplications before the MIIP (in force as from 15 December 1994) last modification on2 April 2010;
– Resolution of the Director General of the MIIP, establishing the Rules and Criteria inorder to resolve procedures before the MIIP (in force as from 10 August 2004);
– Resolution of the Director General of the MIIP, establishing the Tariff for the Servicesrendered by the MIIP (last modification on 24 August 2009).
– Resolution of the Director General of MIIP, establishing the maximum terms forresponding to procedures filed at MIIP (in force as from 11 December 1996; lastmodification on 9 August 2004)
Duration of Registration
Duration is ten years from the date of filing; indefinitely renewable for like periods.Registrations granted under the former Law (before 28 June 1991) will retain the five-yearterm duration, counted from the filing date; but will be renewed for ten-year periods underthe present Law.
Application for renewal must be filed within the last semester immediately prior to the duedate or within the six-month grace period immediately following.
The following documents are necessary:
(1) Power of attorney.(2) Application form in duplicate; may be filled in and signed by attorney.(3) Sworn written statement that the mark has been used in relation to the products or services
concerned and that the use has not been interrupted for a period of three years or more.If the mark is registered in more than one class, use in one class will be sufficient tosupport renewal of the mark for the other classes as well. Is required the confirmationthat the trademark has been used uninterruptedly in the last three years, either directlyby the current proprietor or through a duly recorded licensee.
(4) The use made by a third party who is not duly recorded as a licensee before the MexicanInstitute of Industrial Property does not benefit the proprietor of the trademark registration.
If the trademark has not been used and there is no intention to use it in the near future, butcontinued protection is desired, it is advisable to file a new trademark application replacingthe existing one. In this situation, it is highly recommended to perform a trademark availabilitysearch.
Registrable / Not Registrable
The following, if not belonging to any of the categories mentioned under ‘Not Registrable’hereafter, may be registered as marks:
– names and figures which are visible, sufficiently distinctive and are capable of identifyingthe goods or services for which they are applied;
– three-dimensional forms;– trade names and denominations or corporate names; and– the name of an individual, provided that a homonym has not been registered or published
a trade name.
Isolated letters, numbers or colours are registrable, only if they are combined with oraccompanied by signs, devices or words giving them a distinctive character; numbers expressedin their written form (such as ‘TWELVE’) may be registered.
A mark may be registered in any language. Note that the translation into another languageof an unregistrable word cannot be registered as a mark. The law also provides for theregistration of collective marks, trade names, advertising slogans and appellations of origin.At present sound marks, fragrance marks, taste marks, tactile marks and other signs, whichare not visible, cannot be registered.
According to the Mexican Industrial Property Law, the following are not registrable as amark:
(1) Animated or changing denominations, figures or three-dimensional forms, which areexpressed dynamically, even where these are visible.
(2) The proper, technical or commonly used names of the products or services to be coveredby the mark, even if such names are in a foreign language, and words which in the currentlanguage or in the practices of the trade have become a customary or generic designationof the products or services concerned.
(3) Three-dimensional forms that are in the public domain or that have come into commonuse and, in general, three-dimensional forms lacking such originality as would readilydistinguish it.
(4) The usual and current form of a product, or that imposed by the inherent nature of theproduct or service or by its industrial function, is not registrable as three-dimensionalmark.
(5) Denominational figures or three-dimensional forms which, considering the whole oftheir characteristics, are descriptive of the products or services to be protected by themark, including those that can serve to designate the kind, quality, quantity, composition,intended purpose, value, place of origin or time of production or of supply, of the productsor services concerned. (A descriptive designation shall not be considered as distinctiveeven if it has any fanciful spelling or if it is the result of the putting together of two ormore words which, when analysed separately, would still be descriptive as a whole.)
(6) Isolated letters, numbers or colours, unless combined with or accompanied by elementssuch as signs, designs or denominations that give them a distinctive character.
(7) The translation into another language, unusual or capricious spelling, variation or artificialconstruction of one or more unregistrable words.
(8) Signs which reproduce or imitate, without authorization, armorial bearings, flags oremblems of any country, State, municipality or other similar political entity; likewisethe designations and abbreviated titles of international, governmental, intergovernmental,non-governmental or any other officially recognized organizations; likewise the verbaldesignation thereof.
(9) Signs, which reproduce or imitate official signs or hallmarks indicating control andwarranty adopted by any State, unless authorized by the competent authority.
(10) Signs, which reproduce or imitate coins, banknotes and other national or foreign officialmeans of payment, or commemorative coins.
(11) Signs, which reproduce or imitate names or the graphic representation of decorations,medals or other awards obtained at officially recognized exhibitions, fairs, congressesor cultural or sporting events.
(12) Geographic names, proper or ordinary, maps, and names and adjectives of nationalitywhen they indicate the origin of the products or services concerned and may causeconfusion or error as to the origin of these.
(13) Names of population centres, towns or places that are characterized by the manufactureof certain products, with a view to protecting the latter, with the exception of the namesof places that are private property when they are specific and unmistakable and the ownerhas given his/her consent.
(14) Names, pseudonyms, signatures, seals and portraits of persons without the consent ofthose concerned or, if they are deceased, of their spouse, blood relatives in straight lineand by adoption, and collateral, both until four grade.
(15) Titles of literary or artistic works, titles of publications and diffusions periodical, fictitiousor symbolic personages, characterizations of human persons, artistic names anddenominations of artistic groups, unless they are expressly authorized by the owner ofrespective right.
(16) Denominations, figures or three-dimensional forms liable to deceive or mislead thepublic, namely those that give a false indication as to the nature, components or qualitiesof the products or services that they claim to cover.
(17) Denominations, figures or three-dimensional forms being identical or similar to a markwhich in the opinion of the MIIP is a well-known mark in Mexico for any products orservices (note that under the present Law, a mark is not registrable if it is identical orsimilar to a well-known mark for any products or services, and not only to such markfor the same or similar products or services). The most recent amendment to the IndustrialProperty Law (on June 16, 2005) states that this prohibition will proceed in any case inwhich the use of the mark sought for registration: (a) could cause confusion or risk ofassociation with the owner of a well-known mark; (b) could constitute a non-authorizedadvantage for the owner of the well-known mark; (c) could cause a loss of reputation ofthe well-known mark; and (d) could dilute the distinctive character of the well-knownmark (this prohibition will not be applicable when the owner of the new applicationsought for registration is also the owner of the well-known mark).
(18) Denominations, figures or three-dimensional forms being identical or similar to a markwhich in the opinion of the MIIP is a famous mark in Mexico for any products or services(this prohibition will not be applicable when the owner of the new application soughtfor registration is also the owner of the famous mark).
(19) Any mark that is identical or confusingly similar to another mark, which is previouslyregistered for the same or similar products or services and is still in force. However, anidentical mark, which is already registered, may be registered for similar products orservices if applied for by the same proprietor. (see further ‘Associated marks’).
(20) Any mark that is identical to, or similar to an extent liable to create confusion with, atrade name applied to a company or to an industrial, commercial or service establishment,the primary activity of which is the production or sale of products or the rendering ofthe services to be protected by the mark, and provided that the trade name has been usedbefore the filing of the application for registration of the mark or before the declareddate of first use of the mark. However, such mark may be registered if applied for by theuser of the trade name, provided that there is no other published, identical trade name.
Trade marks and service marks
The distinction is made depending if the mark applies to goods (classes 01 to 34) or services(classes 35 to 45) of the International Classification of Goods and Services, Nice Classification.The provisions relating to trademarks for goods in principle apply to service marks as well.
Colour marks
The Mexican Trademark Law does not recognize these marks. In fact, it is considered as anon-registrable element when registered alone. (view point (6) of Not Registrable).
Three-dimensional marks
These marks are comprised with distinctive visible forms, which are original and capable toidentify in commerce the goods to which the same are applied to. The Regulations of theMexican Trademark Law include as three-dimensional marks wrappings, packings, bottles,as well as the form or presentation of a product. It is also possible to register three-dimensionalmarks accompanied by words and/or devices, as ‘mixed marks’.
Collective marks
Legally incorporated associations of manufacturers, producers, merchants or purveyors ofservices may apply for the registration of a collective mark which is to distinguish in themarket the products or services of their members from the products or services of others.When filing an application for the registration of a collective mark, the regulations for the useof the mark must be filed. A collective mark may only be used by the members of theassociation owning the registration. Collective marks may not be assigned.
Word marks
Apart from the limitations mentioned in the ‘Not Registrable’ topic, these marks are composedby one or more letters, words or numbers capable to identify in commerce the goods and/orservices to which it is applied to.
Distinctive visible figures (not three-dimensional marks), logos or designs, without words,that are capable to identify in commerce the goods and/or services to which it is applied to.Notwithstanding the above, some firms consider within the ‘device marks’ the marks composedby ‘word & logo’, which are also registrable under Mexican legislation.
Packaging
These marks are included as three-dimensional marks.
Associated marks
Marks suited to cause confusion but owned by the same applicant may be registered asassociated marks.
For the purposes of assignments the MIIP may declare that the trademark registrationsbelonging to the same owner are associated (and consequently may only be transferred together)if they are identical or confusingly similar and cover the similar products or services. If theowner of two or more associated marks is of the opinion that no confusion will arise if anyof the marks is used by another person for the products or services concerned, he/she mayrequest before the MIIP the dissolution of the association; the decision of the Institute on suchrequest is final.
Series of marks
These marks are not recognized by the Mexican Trademark Law.
Other marks
Apart from the ‘mixed marks’ (word & logo; word & three-dimensional; word, logo &three-dimensional marks), the Mexican Trademark Law also allows the protection of slogans,trade names and denominations or corporate names, as well as individuals’ names, as long assaid registrations do not generate confusion with a registered mark, a person’s name (for caseswhen the name is a famous one) or published trade name.
The exclusive right to use an advertising slogan is obtained by the registration thereof. Asadvertising slogans are considered phrases or sentences the purpose of which is to advertiseto the public establishments or commercial, industrial or service enterprises, or to advertiseto the public products or services, so as to easily distinguish them from others of the samekind. For registration of such slogans, for which in principle the rules in respect of trademarksare applicable, an application in duplicate has to be filed with the MIIP.
If a slogan relates to products or services, the application shall mention the same precisely;an application relating to a slogan may cover goods or services of more than one class. Slogansrelating to an enterprise or establishment are considered as to relate to a special class, additionalto the classes of the International Classification; the registration of such slogans will notprotect products or services, not even when these products or services are connected with thementioned enterprise or establishment.
The duration of the registration of advertising slogans is ten years from the date ofapplication; registration may be renewed for ten-year periods. Use will be required for renewal.
Any person (individual or legal entity) using or desiring to use a mark to distinguishgoods/services he/she manufactures/provides, respectively, may acquire the exclusive rightto use a mark by registering same.
Foreigners in principle have the same rights to obtain protection and registration as nationalsof Mexico. Applicants not residing in Mexico must appoint an agent and give an address forservice in Mexico.
Legally incorporated associations of manufacturers, producers, merchants or purveyors ofservices may apply for the registration of a collective mark.
Assignment
A registered mark may be assigned, with or without the business, to one or more other parties;the rights to a pending application for registration of a mark may be assigned as well.Assignment must be recorded with the MIIP in order to be effective as against third parties.
In case of a merger of bodies corporate, it will be assumed that the rights to registered marksare assigned, except where provided for otherwise.
Requirements for recordal of an assignment:
(1) Petition in duplicate, stating the number of the mark and the name, nationality and addressof the original and of the new owner.
(2) Assignment deed, signed by assignor and assignee before a Notary Public, and legalizedby a Mexican Consul, or bearing the ‘Apostille’ of the Hague Convention Abolishingthe Requirement of Consular Legalization for Foreign Public Documents of 1961 (fordocuments from countries party to that Convention).
(3) Power of attorney, signed by the new owner. The filing of the certificate of trademarkregistration is optional.
In case the recordal of an assignment is requested and there have been prior, unrecordedassignments of the same registration, the prior assignments must also be mentioned, and allassignments will be recorded.
Associated marks can only be assigned together. Collective marks may not be assigned.
Requirements for Filing
In order to obtain a trademark registration, a written application must be filed before the MIIP,pointing out the following information:
(a) Name, nationality and address of the applicant.(b) The distinctive sign constituting the mark and information as to whether the word mark,
innominate (design), three-dimensional, or mixed (combination of them) or whether itis three-dimensional.
(c) The date of first use of the mark, which cannot be modified at a later time, or a statementthat the mark has not been used in Mexico. The lack of such statement will be assumedas if the trademark has not been used yet.
(d) The products or services to which the trademark will be applied.(e) When it is known, class number of the goods or services to be claimed. (Nice
Classification ninth edition.)(f) Disclaimers (i.e., ‘ingredients’, ‘Net., wt., 200g’).(g) The complete establishment address of the applicant (if any).
The documents, required for prosecuting a trademark application are:
(1) Power of attorney. Depending on the formalities covered by same, the power of attorneydocument will be useful for the mere prosecution of the trademark application (simple)or also for the enforcement of rights (complete):
(a) Simple power of attorney: Signed by the applicant, or its legal representative; signedby two witnesses, pointing out their complete name and address. If applicant is alegal entitiy, in POA must be indicated the document, place and date when facultiesof legal representative were granted.
(b) Complete power of attorney: Signed by the applicant, or its legal representative;signed by two witnesses, pointing out their complete name and address; certifiedby Notary Public and legalized up to the Mexican Consulate or Apostilled.
We always request the compliment of all formalities, in order to avoid future hazards inthe future.
(2) Two prints of the mark. In the case of three-dimensional mark, 2 photographs or drawingsin 3 planes (width, height and depth) (minimum size 4 cm × 4 cm, maximum size10 cm × 10 cm). (However, in practice it will be necessary to provide more prints, e.g.,ten prints, to the attorney.)
(3) Consent or authorization if the application relates to a mark falling under any of thecategories as mentioned above under ‘Not Registrable’ sub 8, 9, 13, 14 or 15.
(4) In the case of an application for a collective mark: list of the members of the applicantassociation, and regulations for the use of the mark.
(5) In case of trade names, it is necessary to file a notarized document in order to evidencethe effective use of the trade name. (It is important that above-mentioned documentcontains the name of the applicant, the factory address in which the trade name has beenused; the date of first use, the activity or use of the company and photographs of theplace.)
(6) When a mark is applied for in the name of two or more persons, the rules agreed uponbetween the applicants regarding the use and licensing of the mark and the transfer ofrights in it shall be filed together with the application.
Once all requirements have been met and all the cited marks have been overcome asimpediments, the registration certificate shall be issued and will be published in the officialIndustrial Property Gazette issued by the MIIP. However, if on the contrary, the citationsmade by the Examiner are not duly overcome, the denial resolution shall be issued within aperiod of time that depends on workload of Examiner in charge, and it could vary from twoto four months.
In view of the above, after an application has been admitted for registration, it is notnecessary to comply with further requirements, unless any of the following occurs:
– that the legal representative changes;– that the MIIP mis-notifies to a third party the registration certificate;– that the certificate of registration requires any corrections.
In any of the above-mentioned scenarios, it will be necessary to conduct further prosecutionssuch as: inscription of the new legal representative; request of a certified copy of the registrationcertificate; request of correction of the registration certificate.
Priority
A priority right is the recognition by which the filing date of an application in a foreign country
is also recognized as the filling date in Mexico; same must be applied during the next sixmonths from the filing of the application abroad.
In order to recognize priority rights, the applicant will have to meet the followingrequirements.
Indicate the number, country and filing date of the original application from which priorityrights are claimed, exhibit the proof of payment of corresponding fees and exhibit, withinthree months after the filing date, a certified copy of the trademark application from whichpriority rights are claimed.
If the application filed in Mexico covers additional goods/services to those claimed by theapplication from which priority right is claimed (‘priority application’), priority rights willbe recognized only for the goods/services specified in the ‘priority application’.
Declaration of Use and Similar Procedures
If the use of the trademark complies with all necessary requirements, it is not compulsory,but advisable to file a statement of use every three years, counted from a trademark’sregistration date. This statement or the submission of an evidence of use may discourage thirdparties from raising cancellation actions based on the grounds of non-use.
Procedure
Upon receipt of an application same shall first be examined in regards to the compliance withall formal requirements (authorized registrability of the mark, correct belonging ofgoods/services to the claimed class, accompaniment of the necessary documentation, etc.). Ifthe application or the accompanying documents do not satisfy the formal requirements, theapplicant shall be informed thereof by means of an Official Action. The applicant may amendand/or comply with the formal requirements made within the Official Action. Failure to complywith the requirement made by the MIIP’s Examiner may result in the issuance of a new Officialaction (if the prior Action was answered, but same was insufficient for the Examiner) or theabandonment of the application, when no response was filed within the corresponding deadlineterm.
If at the time of filing a new trademark application, the applicant’s name, address ornationality, the denomination of the mark or the products or services to be claimed are notgiven, or the receipt for the payment of the required fees is not furnished, the day all suchrequirements will have been complied with will be the filing date.
When the formal requirements have been satisfied, a further examination as to registrabilityand/or prior rights shall be undertaken. If it is found that the mark is not registrable or if theexamination reveals the existence of an identical or confusingly similar mark/trade namealready registered and in full force, or in course of registration, in connection to the same,similar or related goods or services and there is a likelihood of confusion; the MIIP shall issuean Official Action so that the applicant may assert his/her right. Failure to respond the OfficialAction within the deadline period will generate the abandonment of the trademark application.Nevertheless, if a response is duly submitted, the procedure will be continued.
If the results of the second examination reveal the existence of a prior trademarkapplication/registration, the applicant shall respond the Official Action by pointing out to theExaminer the necessary arguments that support the lack of ‘risk of confusion’ and/or ‘risk ofassociation’ between the proposed mark, and the cited one(s). Within said response, additionalmeasures may be undertaken in order to evidence for the Examiner the differences betweenthe marks in conflict (e.g., exclusion from the application’s description of goods/services ofthe goods/services claimed by the cited application/registration; phonetic, grammatical,conceptual and/or visual differences). In some cases, it may also be useful to submit a letterof consent from the owner of the cited prior mark, certified by a Notary Public and legalizedup to Consul of Mexico. For documents emanating from a country party to the Hague
Convention Abolishing the Requirement of Consular Legalization for Foreign PublicDocuments of 1961, certification by ‘Apostille’ is sufficient instead of consular legalization.Notwithstanding the above-mentioned, in case of a word mark conflict, if the mark appliedfor is identical or very similar to the cited prior mark, it is not likely for such letter of consentto be considered as useful by the MIIP’s Examiner.
It is important to mention that, since Mexican legislation does not follow the ‘oppositionsystem’, within all procedures, resolutions will be subject to the criterion employed by theExaminer. If an objection against registration is based upon the registration of an identical orconfusingly similar mark being the subject of a cancellation or nullification procedure, thedecision in that procedure will be awaited upon receiving a Final Resolution over theCancellation or Nullification procedure.
If an amendment consists in a modification of the mark, or if the claimed goods or servicesare increase, MIIP will consider these modifications or increases as a new application, and inconsequence, filing date would be modified and government fees must be paid (note: It is notconsidered as increases of goods or services, if the applications’s sheet is replaced, in orderto exclude expressly the goods or services covered by anticipations, at the moment ofresponding office actions). The requirements for filing a new trademark application (includingthe payment of the required fees) must be complied with again, and a new examination shallbe carried out. Opposition to an application in prosecution is not provided for, but after theregistration of said mark is granted, cancellation or nullification actions may be requested. Incase of refusal/denial and according to an amendment to the Federal Administrative ProceduralLaw which came into force as of April 2000, a Remedy or an Appeal is available. The Remedyhas to be filed within fifteen days with the MIIP or the Appeal has to be filed with the FederalCourt of Fiscal and Administrative Justice within forty-five days following the refusal notice.
The Institute shall issue a certificate for each mark as proof of its registration. The certificateshall include a specimen of the mark and the following particulars:
– registration number;– distinctive sign constituting the mark, mentioning whether it is nominative, device mark,
three-dimensional or mixed;– goods or services to which the mark will be applied;– owner name and address;– location of the establishment, where applicable;– filing date of the application;– date of recognized priority;– date of first use, where applicable, date of issuance of the certificate; and– date on which the registration will be in full force.
Online filing
Mexican IP Law does not follow the ‘opposition procedure’, thus, there are not publicationsof trademark applications, the publication is only performed when the registration is granted.
Registered trademarks are published in Industrial Property Gazette (MIIP’s diffusionmechanism).
When the Institute refuses the registration of a mark, it shall notify the applicant in writing,indicating motivations and legal grounds for this decision.
An online consultation system of the Industrial Property Gazette is available:http://siga.impi.gob.mx/.
An online consultation and downloadable system of trademark files is available:http://vidoc.impi.gob.mx/.
Database http://marcanet.impi.gob.mx/ is available without any cost for searches of wordmarks, advertising slogans and trade names.
Since 27 November 1989, the Nice Classification of goods and services is applicable inMexico. This classification at present contains 34 classes of goods and 11 classes of services.Registrations of marks applied for prior to 27 November 1989 were classified according tothe former Mexican classification, which contained 55 classes of goods and 20 classes ofservices. Registrations classified according to this former classification have been re-classifiedin accordance with the Nice Classification on renewal.
A separate application must be filed for each class of the International Classification. Thus,a single application may not cover products or services belonging to different classes.Registration may be obtained for one or more articles or services in one class. Since 1 October1994, the goods or services to be covered by the registration must be specifically stated(coverage of a whole class without specification of goods or services is not accepted by theIndustrial Property Law).
Mexican Trademark Law establishes that the correct classification of a product/serviceshall be determined in accordance with the Mexican Industrial Property Law Regulations.However, said regulations currently follow the classification provided by the ninth edition ofthe Nice Classification.
On 15 June 2009, an official text in Spanish of the ninth edition of the Nice Classificationwas published, which is applied by the MIIP.
Trademark applications/registrations filed under the provisions set forth within the eighthedition of the Nice Classification and/or prior to the adoption of the Nice Classification byMexican legislation are re-classified (while registering, or renewing same) to adjust theirdescription of goods/services to the provisions set forth within the ninth edition of the NiceClassification, even though when said measure requires the protection of more than one class.Actually, these types of marks are currently the only marks recognized as ‘multi-class’registrations.
Note: Despite the fact that Mexican Industrial Property Law and its Regulation establishthat ‘marks shall be registered in relation to specific goods or services’, the current criterionof the MIIP is to consider that by claiming the heading of one class, the applicant is claimingall of the goods/services comprised within same. Furthermore, when filing a new trademarkapplication, it is preferable that the claimed goods/services are correctly described within theNice Classification; otherwise, it is likely that the application might face impediments raisedby the Examiner due to misinterpretations in connection with the nature and/or function ofthe claimed goods/services.
Search
Search are mainly performed at the MIIP database, by these searches it is possible to determinethe existence of identical or confusingly similar words that have been previously filed and/orregistered, and which could be considered as an obstacle for the registration of a proposednew mark.
Please note that the obtained search results are fallible and there is a delay of one or twoweeks for the MIIP to update said database. Actually, the MIIP’s database and reports clearlystate that ‘the results of the trademark search do not constitute any favourable right for theregistration of a proposed mark and are merely informative’.
Deadlines
For trademark applications: Once the application is filed, there are no required deadlines tosubmit the Power of Attorney document, exception made in the event that an official actionis issued.
The deadline term to submit the priority documentation is of ‘three months’ counted fromthe applications filing date.
If an Official Action is issued, whether in connection with formal requirements, or thecitation of prior rights; the term to respond the same is of two months counted fromthe following day to the notification date of the said Action. Nevertheless, said term may beextended for an additional two-month period. The additional period shall be counted from theday following the expiration date of the first two-month period above mentioned.
According to the Mexican Trademark Legislation, in order to obtain an extension of term,it is not necessary to file a written request before the MIIP; thus, the term is automaticallyextended, by covering the payment of the extension of term Government Fees.
Publications in the Industrial Property Gazette shall have the effect of a notification on thedate specified in the Gazette or, where no date is specified, on the day following that on whichthe Gazette is placed in circulation.
For trademark registrations: If an Official Action is issued, the term to respond to the sameis of two months counted from the following day to the notification date of the said Action.Said term may not be extended.
Publication / Public File Inspection
According to the Mexican Trademark Law and its Regulation, the physical files of marks,commercial names and published denominations of origin are always available for consultationand review by any third party.
The owner or his/her attorney will be able to obtain, solely during the time in which thefiles are in full force, the original documents filed during the prosecution of the matter.
Invalidity, Lapse and Cancellation of Registration
The registration of a trademark shall be invalid when: a). It is granted in violation of theprovisions of this Law or that which was in force at the time of registration; b) Notwithstandingthe provisions of this subparagraph, the invalidation action may not be based on a challengeto the legal representation of the applicant for the registration of the trademark. c) Thetrademark is identical or confusingly similar to another that has been used in the country orabroad prior to the filing date of the application in respect of the registered trademark and hasbeen applied to the same or similar products or services, provided that the person who assertsthe stronger right by virtue of prior use proves uninterrupted use of the trademark in thecountry or abroad prior to the filing date or, where applicable, prior to the date of first declareduse by the person who has registered it; d) The registration was granted on the basis of falseinformation contained in the application; e) The registration was granted in error, by mistake,or owing to a difference of judgment, there being another registration in force which isconsidered infringed because it is that of an identical or confusingly similar trademark appliedto identical or similar services or products; and f) The agent, representative, user or distributorof the owner of a trademark registered abroad applies for and secures the registration of thetrademark or of a confusingly similar trademark in his own name, without the express consentof the owner of the foreign trademark, in which case the registration shall be regarded ashaving been obtained in bad faith.
Invalidation proceedings may be instituted within a period of five years from the date onwhich the publication of the registration in the Gazette becomes effective; with the exceptionof actions under subparagraphs a) and e) which may be instituted at any time, and undersubparagraph b) which may be exercised within a period of three years.
The registration shall expire when it is not renewed as provided for by this Law; and whenthe trademark ceases to be used during the three consecutive years immediately prior to therequest for an administrative action for lapse, except where there are reasons for the non-usethat are justified in the opinion of the Institute.
There shall be grounds for cancellation of the registration of a trademark if its owner hascaused or condoned its conversion into a generic name denoting one or more of the productsor services for which it was registered, in such a way that, in commercial circles and in thecourse of its generalized use by the public, the trademark has lost its distinctive character asa means of distinguishing the product or service to which it is applied.
The owner of a registered trademark may at any time, in writing, request the cancellationof the registration thereof. The Institute may require authentication of the signature on therequest in the cases provided for in the Regulations under this Law.
The action for invalidity, lapse or cancellation of the registration of a trademark shall bemade for administrative purposes by the Institute, either ex officio or at the request of a partyor the Federal Public Prosecutor, where there is an interest on the part of the FederalGovernment. No declaration of lapse is required when a registration lapses on account ofnon-renewal.
Use Requirement
Under Mexican Legislation it is compulsory to use a registered trademark. Use of a mark maynot be discontinued without justified reasons for a period of three years or longer; a justifiedreason could, for instance, be present if the goods or services could not be imported into orrendered in Mexico, due to Government restrictions on importations or the like. The formerrequirement that the owner of a registered mark must prove to the satisfaction of the Mexicantrademark authorities, that he/she is using the mark effectively, has been abolished.
Nevertheless, the filing of a Declaration of Use before the MIIP per every three-year period,counted from the registration’s granting date confirming that the mark has been used in Mexicoduring the three preceding years is still recommended. The use of a trademark must be madein accordance with the following particulars:
(a) For at least one of the products/services it is registered for.(b) As it was registered or with slight variations that do not alter its distinctive character.(c) Within Mexican Territory or for exportation purposes.(d) The products/services claimed by the registration must be available in the market in the
form and quantities as customary for the nature of the product/service.(e) The mark has to be used either by the proprietor thereof, or by a duly recorded licensee.
The use made by a third party who is not duly recorded as a licensee before the MIIPdoes not benefit the use made by the proprietor of the trademark registration.
Failure to use the trademark in the terms and conditions stated above for three consecutiveyears might result in the cancellation of the trademark registration, in case a third partychallenges the validity of the registration on the grounds of non-use.
Marking
Registered marks, when used on or in connection with national products or services coveredthereby, should bear the indication ‘Marca Registrada’, or the initials ‘M.R.’, or the sign ‘®’.
(In the case of service marks, said indications should appear both at the place where theservices are rendered or contracted for and on any medium on which they can be representedgraphically.) Marking is a condition for taking civil or criminal actions against infringers.
False marking is considered an administrative offence punishable as in the case of patents,and a second or further offence of this kind after the first penalty for such offence as anadministrative offence has been levied is deemed a criminal offence punishable withimprisonment and fine. If the registration of a mark has been definitively nullified or cancelledor has expired, the marking will be false when one year has expired from the final decisionconcerned or from expiration of the registration.
Both exclusive and non-exclusive licenses of a registered mark may be granted. A licensemay be granted under a registered mark with regard to all or some of the products or servicesconcerned. License agreements must be recorded with the MIIP in order to be effective againstthird parties.
The products sold or the services rendered by the licensee must be of the same quality asthose made or rendered by the owner of the mark. The products or the establishment wherethe services are rendered or contracted must indicate the name of the licensee and the placewhere the products are manufactured or the services rendered and all other data as providedfor in the Regulations.
License of trademark applications are possible, but will not be effective until after registrationof the mark.
A licensee whose license has been recorded may take infringement action as if he/she werethe owner of the mark, unless agreed upon otherwise. Use by a licensee whose license hasbeen recorded shall be deemed use by the owner of the mark.
A franchise is present where, together with the license to use a mark, technical know-howis transmitted or technical assistance provided, enabling the franchisee to produce or sellproducts or to render services uniformly and with the operational, commercial andadministrative methods established by the owner of the registered mark, for the purpose ofpreserving the quality, prestige and image of the products or services to which the mark relates.Before a franchise agreement is concluded, the franchisor must provide the prospectivefranchisee with sufficient information concerning the economic, technical and financial statusof the franchise and its system. Franchise agreements must be recorded with the MIIP in orderto be effective as against third parties.
Infringement
Not considered infringement are trading in, distributing, acquiring or use of a product coveredby a registered trademark, after the product has been legally brought into the market by theowner of the mark or a licensee including importation of the products to which the mark isapplied, made by a person for use, distribution or trade in Mexico, when the products wereintroduced in the market by the owner of the trademark registration or his/her licensee. Thetrademark registration must be owned in Mexico and in the country where the goods wereproduced by the same person or persons belonging to the same group of economic interest orhis/her (their) licensee (in this context, it will be deemed that the owner is the same when twoor more individuals or entities are involved being directly or indirectly related through theircorporate structure, and provided that at least 50% of the shares are controlled). If saidrequirements are met, parallel imports may be allowed.
Not considered infringement is the use by an individual or legal entity on his/her or itsproducts or services of his/her or its own name, even if being identical or confusingly similarto a mark registered in the name of another party, provided that the name is used in the wayit was normally used, and has sufficient distinctive elements so as to distinguish it from theregistered mark.
Use of a mark for the purpose of comparison with similar products or services will not beconsidered as infringement if made for information purposes and provided that the comparisonis not exaggerated, false or misleading under the terms of the Federal Law for ConsumerProtection. So, comparative advertising if made properly may be permitted.
In case of infringement, the owner of a trademark is entitled to claim damages. The licenseewhose license has been duly recorded is entitled to take infringement action on his/her own,unless agreed upon otherwise.
The Law also provides for inspections (which may be requested by the owner of a trademarkregistered) to be executed by persons authorized by the MIIP, which may also serve as a toolagainst infringement. Such inspections may be held even outside the normal business days
and hours, and may be conducted in places where products are manufactured, stored,transported, sold or marketed, or where services are rendered. If during an inspection anybona fide evidence is found of an infringement, the person executing the inspection may seizethe infringing goods and make an inventory of those goods, and notify the Federal PublicProsecutor.
Previously to the seizure of goods by the person running the inspection; will require thatthe applicant provide sufficient security to cover any damages that might be caused to theperson against whom the measure is sought.
The MIIP may act as an arbitrator in disputes relating to the damages to be paid in case ofinfringement. If appointed as arbitrator the Institute will establish damages. The minimumamount for compensation of damages is established at 40% of the sales price of each infringingitem. If the Institute is not appointed as arbitrator, damages are to be awarded by the competentcivil Court.
Infringing acts / Non-infringement acts
The following shall constitute administrative infringements of a trademark:
– Engaging in acts contrary to proper practice and custom in industry, commerce andservices, which amount to unfair competition and which relate to the subject matterregulated by this Law.
– Distributing or placing products on sale or offering services with the indication that theyare protected by a registered trademark when they are not; if the registration of thetrademark has expired or been declared invalid or cancelled, there shall be infringementone year after the date of lapse or, where applicable, the date on which the relevant actionbecame effective.
– Using a trademark confusingly similar to another registered trademark to protect productsor services identical or similar to those protected by the registered trademark.
– Using a registered trademark or one confusingly similar thereto without the consent ofits owner as an element of a commercial name or business name, or vice versa, providedthat said commercial names or business names are related to establishments workingwith the products or services protected by the trademark.
– Using a trademark previously registered or confusingly similar thereto as a commercialname or business name or part of such a name by an individual or company whose activityis the production, import or marketing of goods or services identical or similar to thoseto which the registered trademark is applied without the written consent of the owner ofthe trademark registration or of the person empowered to give such consent.
– Using a registered trademark without the consent of the owner thereof or without theappropriate license on goods or services identical or similar to those to which thetrademark is applied.
– Offering for sale or distributing goods identical or similar to those to which a registeredtrademark is applied in the knowledge that said trademark has been used on those goodswithout the consent of the owner thereof.
– Offering for sale or distributing goods to which a registered trademark is applied andwhich have been altered.
– Offering for sale or distributing goods to which a registered trademark is applied afterhaving partially or totally altered, replaced or deleted said trademark.
Unlike the provisions set forth within other regulations (e.g., the US Trademark provisions),for Mexico the exclusive right of a trademark is granted under the ‘first to register principle’and not under the ‘first to use principle’. Nevertheless, the prior use of a trademark can beopposed to the proprietor of a trademark registration, while facing infringement actions, and/ormay be used to raise Cancellation Actions on grounds of the prior use of a trademark inMexico, or abroad.
Notwithstanding, in order to take advantage of the prior use of a trademark, somerequirements must be met, namely:
(a) performed under a good faith basis;(b) in connection with the same, or a confusingly similar mark;(c) uninterrupted and continuous in connection with the same, or similar, goods or services;(d) prior to the filing date of the ‘third party’s registration’ or prior to the declared date of
first use of the registered mark.
Prior use abroad has a similar effect.
Remedies
Against the final decision of the Institute in an infringement procedure and according to theamendment to the Federal Administrative Procedural Law of April 2000, a Remedy or anAppeal is available. The Remedy has to be filed within fifteen days with the MIIP or theAppeal has to be filed with the Federal Court of Fiscal and Administrative Justice withinforty-five days following the resolution notice.
Alteration
After registration the list of goods or services cannot be extended, even not though newproducts or services fall within the same class, but a limitation is possible at any time.
Penal provisions
The infringing acts mentioned in the first paragraph above are deemed administrative offences,punishable with fine (up to 20,000 days of the minimum wage prevailing in the Federal District,and, additionally, up to 500 days of said general minimum for each day that the infringementcontinues), temporary closure of the enterprise concerned for up to ninety days, permanentclosure of the enterprise concerned, and administrative detention for up to thirty-six hours.Also using as a mark a sign not registrable as a mark, as well as discrediting the goods, services,or the commercial or industrial activity or establishment of a third party are deemedadministrative offences. Wilfully counterfeiting a trademark in a commercial volume, as wellas a second or further offence after the first penalty for such offence as an administrativeoffence has been levied, are deemed criminal offences, punishable with imprisonment (twoto six years) and fine (from 100 to 10,000 days of the minimum wage prevailing in the FederalDistrict).
Enforcement and Customs
It is recognized the importance of border enforcement procedures that will enable right holdersto obtain the cooperation of customs administrations so as to prevent the release of infringingimports into free circulation.
The right holder lodging an application to the competent authority shall be required toprovide adequate evidence of a prima facie infringement of his/her Industrial Property Rights(IPR) and to supply a sufficiently detailed description of the goods to make them readilyrecognizable by the customs authorities. The competent authorities shall then inform theapplicant whether the application has been accepted and, if so, for what period, and give thenecessary directions to customs officers. After this, it is the responsibility of the applicant toinitiate proceedings leading to a decision on the merits of the case.
The provisions on border measures require the taking of what are essentially provisionalmeasures against imports of infringing goods. The competent authority may require theapplicant to provide a security or equivalent assurance sufficient to protect the defendant andthe competent authorities and to prevent abuse. If the right holder fails to initiate proceedingsleading to a decision on the merits of a case within ten working days, the goods shall normallybe released.
The applicant may be required to pay appropriate compensation to persons whose interestshave been adversely affected by the wrongful detention of goods or through detention ofgoods released pursuant to the failure of the applicant to initiate in time proceedings leadingto a decision on the merits of the case.
Well-known and Reputed Marks
Well-known marks, whether registered or not in Mexico, are protected in this, thatdenominations, figures or three-dimensional forms being identical or similar to a mark whichin the opinion of the MIIP is a well-known mark for any products or services cannot beregistered; furthermore, the owner of a mark, which in the opinion of the MIIP is a well-knownmark, may take infringement action against the unauthorized use of an identical or similarmark, irrespective of the goods or services in respect of which such use takes place. To bedeemed well-known, a mark must be known to a determined sector of the public or to thecommercial sectors of Mexico, where the knowledge of the mark is a consequence ofthe commercial activities carried out by the owner of the mark in Mexico or abroad and ofthe promotion or advertisement of the mark. (Also promotion or advertisement outside Mexicocould be of relevance, if it leads to knowledge of the mark in Mexico.) Whether therequirements for a mark to be deemed well-known are met is to be decided by the Institute.The most recent amendments to the industrial property law (on June 16, 2005) states that amark is reputed (famous) when it is known by the majority of the consumer public.
The official declaration of a well-known or reputed marks is an administrative resolutionissued by the MIIP, by which said authority declares, based on the elements of proof provided,that the conditions by which a mark is well-known or famous subsist at the time that theresolution is issued. The prohibitions stated in sections XVI and XVIbis of Article 90, for theprotection of well-known or reputed marks, will be applied no matter that same are registeredor declared as such. However, in order to obtain the above-mentioned administrativedeclaration, it is necessary to have the registration of the mark in Mexico, covering the goodsor services that originated the notoriety or famousness of it.
In order to obtain the administrative declaration of notoriety or famousness, the applicantmust provide, among other, the following information:
(1) The sector of the consumer public formed by real or potential consumers that identifiesthe mark with the goods and services covered by the mark, based on a poll (of publicopinion) or marketing or any other means authorized by law.
(2) Other sector of the consumer public, different to the real and potential consumers, thatidentifies the mark with the goods and services covered by the mark, based on a poll (ofpublic opinion) or marketing or any other means authorized by law.
(3) The commercial sectors made by merchandisers, industrialists and services suppliersrelated to the goods or services covered by the mark, that identify the mark with its goodsor services, based on a poll (of public opinion) or marketing or any other means authorizedby law.
(4) The date of first use of the mark in Mexico and, if applicable, overseas.(5) The period of time of continued use of the mark in Mexico and, if applicable, overseas.(6) The commercialization channels of the mark in Mexico, and if applicable, overseas.(7) The diffusion means of the mark in Mexico, and if applicable, overseas.(8) The effective advertisement period of the mark in Mexico, and if applicable, overseas.
(9) The investment made in the advertisement or promotion of the mark during the last threeyears in Mexico, and if applicable, overseas.
(10) The geographic area of effective influence of the mark.(11) The sales volume of the goods or the income obtained by the rendering of the services
covered by the mark during the last three years.(12) The economic value that the mark represents in the company’s net assets or the economic
value that the mark represents according to an assessment or valuation made to thecompany.
(13) The registration number of the mark in Mexico, and if applicable, overseas.(14) The Franchise Agreements or License Agreements that had been granted in connection
with this mark.(15) The percentage that this mark occupies in the corresponding sector or market segment.
The MIIP will presume, unless proven to the contrary, that the conditions which originatedthe declaration, or its actualizations, subsist for five years from its issuance date. As aconsequence, during said period, and depending on each case, that the prohibitions stated insections XVI and XVIbis of Article 90 must be applied.
Such Declarations can be updated at any time, by the person who demonstrates its legalinterest in such Declaration, if, and only if, the conditions that made such mark to be awell-known or a famous mark remain until that date.
The minimum information required in order to apply for an application for the administrativedeclaration of a well-known or famous mark are as follows:
(1) name, nationality, address, telephone number, fax number, e-mail of the applicant orfrom the legal representative;
(2) trademark and its registration number;(3) documents and elements of proof in order to demonstrate the legal action;(4) the payment of government fees.
Once the application is filed along with the necessary documents and once the governmentalfees are duly covered, the MTO will proceed with the corresponding examination. If somerequirements are not complied with, or if the information is not sufficient for its comprehensionand analysis, the MTO will require the applicant to do the necessary precisions or specificationswithin the following four months. If the applicant does not comply with the requirementswithin the above-mentioned term, the application filed to obtain the Declaration of Protectionof Well-known or Reputed Trademarks will be abandoned.
Finally, the resolution of declaration of notoriety or famousness must be published in theIndustrial Property Gazette.
The declaration will be null in the following cases:
(1) When granted in contravention of the provisions of this Chapter.(2) When the proofs provided are false.(3) When granted based on an incorrect valuation of the proofs provided.(4) When granted to a person who does not have the right to obtain same.
As for transmission effects, the declaration of notoriety or famousness will be bounded to theregistration(s) which originated said notoriety or famousness.
Trademarks and Trade Names
The trade name of a company or an industrial, commercial or service establishment and theright to its exclusive use are protected without a registration being required. The protectionwill extend to the geographical area where the customers and clients of the company orestablishment concerned are; if there is a substantive and constant dissemination of the name
at national level the protection will extend to the entire country. A party who is using a tradename may request the MIIP to publish same in the Industrial Property Gazette. By suchpublication an assumption of good faith in the adoption and use of the trade name will beestablished. Use of the trade name is a condition for publication. If the application forpublication is found formally in order, an examination will be made to determine whether anidentical or confusingly similar trade name applied to the same activity has been publishedbefore, and whether an identical or confusingly similar mark has been registered for productsor services being closely related to the primary activity of the company or establishmentapplying for publication. Trade names lacking of elements to distinguish the particular companyor establishment from others of the same kind and trade names which would be not registrableas a mark (see above, ‘Not Registrable’) will not be published. The effects of the publicationof a trade name remain valid for ten years from the date of the relative request and may berenewed indefinitely for like periods. Renewal must be applied for during the last six monthsof a ten-year period; a grace period of six months for renewal is provided. Use of the tradename is a condition for renewal, and a sworn written statement that the name has been usedmust be filed. The transfer of a business or establishment will imply the transfer of the rightto the exclusive use of the trade name, except where provided for otherwise. Trade nameswill in principle be governed by the same provisions which apply to marks, except if providedfor otherwise.
Moreover, a trade name which does not describe the kind of the enterprise or the productsor services of the same may be registered as a mark. (If such registration is applied for by amerchant who does not manufacture the products to be covered, consent by the manufactureris required.)
A previously registered mark may not be used or form part of the denomination or corporatename of any corporate entity engaged in the production of, importation of or trade in productsor services being identical or similar to those for which the registered mark is applied, exceptwhere the express consent in writing of the owner of the registration has been obtained.
Using a trade name which is confusingly similar to another trade name previously used bya third party to protect an industrial, commercial or service establishment of the same or asimilar kind, within the geographical area where the effective clientele resides or, in the caseof permanent and massive diffusion, in any part of Mexico, is considered an administrativeoffence punishable with fine (up to 20,000 days of the minimum wage prevailing in the FederalDistrict and, additionally, up to 500 days of said general minimum for each day that the offencecontinues), temporary closure of the enterprise concerned for up to ninety days, permanentclosure of the enterprise concerned, and administrative detention for up to thirty-six hours. Asecond or further offence after the first penalty for such offence as an administrative offencehas been levied is deemed a criminal offence, punishable with imprisonment (two to six years)and fine (from 100 to 10,000 days of the minimum wage prevailing in the Federal District).
Trademarks and Domain Names
Since 1 February 1989, the ITESM, Campus Monterrey has been entrusted with theadministration of Domain Names for Mexico, even though that same started acting officially,as NIC MEXICO, until October 1995. NIC MEXICO formerly only registered ccTLD for the‘.mx’ domains, namely the ones referred to the sub-domains ‘.com.mx, .org.mx, .gob.mx,.edu.mx and .net.mx’; however, nowadays it is possible to obtain a registration of ‘.mx’ without‘.com’.
Trademark registration(s) and/or applications are not considered a ‘pre-requirement’ forregistering a domain name before NIC MEXICO; however, in case any dispute arises betweenthe proprietors of a domain name and of a trademark registration, respectively; said disputewill be subject to the Uniform Dispute Resolution Policy adopted by the WIPO.
Trademarks and Appellations of Origin / Trademarks and Geographical Indications
The Law contains provisions relating to the protection of appellations of origin which originatein Mexico. The procedure for establishing rights to an appellation of origin comprises twodifferent separate stages. The first stage of the said procedure consists in this, that a generaldeclaration of protection of an appellation of origin is issued by the MIIP, which implies thatsanctions for illegal use shall become applicable to anyone who uses the appellation of originwithout authorization (such illegal use shall include use in conjunction with terms such as‘género’ (kind), ‘tipo’ (type), ‘manera’ (make), ‘imitación’ (imitation), or other similar termsliable to lead to confusion in the mind of the consumer or to constitute unfair competition).
The general declaration of protection shall be issued by the MIIP either ex officio or upona request made by any person showing a legal interest. Upon issue of a general declarationof protection the Mexican State shall be the owner of the appellation of origin and saidappellation may be used only with the authorization of the MIIP.
As appellation of origin is considered the name of a geographic region of the country whichis used to designate a product that originates from that region, and the quality or characteristicsof which are due exclusively to the geographic medium, including natural and human factors.The declaration of protection of an appellation of origin shall begin when the declaration isissued and shall remain valid for so long as the conditions governing the basis for the issueof the declaration remain in existence. The general declaration shall cease to have effect onlyupon a relative declaration by the MIIP.
The issue of a general declaration may be applied for by any party having a legal interest,namely:
(a) Natural persons or legal entities directly engaged in the extraction, production orpreparation of the product or products which the appellation of origin is to cover.
(b) Guilds or associations of manufacturers or producers.(c) Departments or agencies of the Federal Government or of the Government of any of the
Mexican States.
Requirement for application: Application in writing, in Spanish, accompanied by evidencein support of the request, should contain:
(a) the name, address and nationality of the applicant; if the applicant is a legal entity, itshall specify also its nature and the activities in which it is engaged;
(b) the legal interest of the applicant;(c) indication of the appellation of origin;(d) a detailed description of the products to be covered by the appellation including their
characteristics, components, form of extraction, production or preparation; the standardsset forth by the Ministry of Economy to which the product, its extraction, preparation orproduction and its form of packaging, packing or bottling will be subjected shall beindicated when this is a determining factor in establishing the relationship between theappellation and the product;
(e) the place or places of extraction, production or preparation of the product intended to beprotected by the appellation of origin, with a description or demarcation of the territoryof origin, taking into account geographical features and political subdivisions;
(f) a detailed description of the links existing between the appellation, the product and theterritory, as appropriate;
(g) any other particulars which may be considered necessary or relevant by the applicant.
Official procedure: Upon receipt of an application for the issue of a declaration of protection,and upon payment of the prescribed examination fees, the documents shall be examined oncompliance with the legal requirements.
If, in the judgment of the MIIP, the documents do not meet the legal requirements or arenot sufficient for the comprehension or analysis of any part of the application, the applicant
shall be informed accordingly in order that he/she may make the necessary clarifications oradditions within a non-extendible term of two months; if the applicant fails to do so in duetime, the application shall be considered abandoned (but the Institute may, if it deems itappropriate, continue the procedure ex officio).
When the documents meet the legal requirements, the Institute shall publish an abstract ofthe application in the Official Daily of the Federation.
The procedure initiated ex officio by the MIIP shall begin on publication in the OfficialDaily of the Federation of a summary of the particulars and requirements as mentioned above,items (c) up to and inclusive (g).
In all cases any third party showing his/her legal interest may make observations orobjections accompanied by supporting evidence within two months from the date of publication.
In the said procedure all kinds of evidence shall be admissible, except admissions andtestimony. The Institute may at any time before the declaration is issued conduct suchinvestigations as it may deem relevant and compile the elements it may deem necessary.
On expiration of the said term of two months, and after making the analyses and afterexamination of the lodged evidence, the MIIP shall issue its final decision. If protection isgranted the declaration will be made and be published in the Official Daily of the Federation.
Against the final decision of the Institute and according to the amendment to the FederalAdministrative Procedural Law of April 2000, a Remedy with the MIIP or an Appeal at theFederal Court of Fiscal and Administrative Justice is available.
The terms of a declaration of protection may be amended at any time, either ex officio oron request of an interested party; the procedure for an amendment is the same in that for thefirst issue of a declaration of protection.
After the issue of a general declaration of protection of an appellation of origin, the rightsto use said appellation of origin may be granted to any interested party satisfying the conditionslisted hereinafter under ‘Applicant’.
The registration of a right of use shall be in effect during ten years from the date of filingof the application for grant of the right of use.
This duration may be renewed for equal periods subject to proof that the grantee of theright of use still complies with the prescribed conditions and requirements and on paymentof a renewal fee.
The grant of an authorization to use an appellation of origin may be applied for by anynatural person or legal entity satisfying the following conditions:
– that he/she or it is directly engaged in the extraction, production or preparation of theproduct or products covered by the appellation of origin;
– that he/she or it carries on such activity within the territory specified in the generaldeclaration;
– that he/she or it observes the official standards laid down by the Ministry of Economy,in accordance with the laws governing the respective products and such other standardsas are expressly stipulated in the general declaration;
– any other conditions specified in the general declaration.
Requirements for application: Applications for the grant of a right to use an appellation oforigin shall be made to the MIIP.
An application must contain the following particulars:
(a) the name, address and nationality of the applicant; if the applicant is a legal entity, itshall also specify its nature and the activities in which it is engaged;
(b) the place in which the applicant carries out the extraction, production or preparation ofthe product;
(c) the certificate issued by the local competent authority attesting that the industrialestablishment is located within the territory appointed in the general declaration;
(d) the certificate issued by the Ministry of Economy attesting that the applicant meets thestandards laid down by the Ministry of Economy, if any. The mentioned certificates mustbe issued within six months prior to the application for the right of use;
(e) original or certified copy of the Power of Attorney, in case the application is filedthrough an Attorney.
Official procedure: Upon receipt of an application for the grant of a right to use an appellationof origin the MIIP shall examine the application on compliance with the legal requirements.
If the documents appear not to meet the legal requirements, the applicant shall be notifiedand given a non-extendible term of two months for filing the necessary clarifications oradditions; if the applicant fails to do so within the imparted delay, the application shall beconsidered abandoned.
When the documents meet the legal requirements, the Institute shall take a decision onregistration of the requested right of use.
The user of an appellation of origin shall be obliged to use it as it appears in the generaldeclaration. If the appellation is not used in the prescribed form, the authorization of use shallbe revoked.
The right to use an appellation of origin is transferable. The transfer shall not take effect,however, until it is recorded at the MIIP, subject to proof that the assignee meets the conditionsand requirements for the acquisition of the right to use the appellation.
The owner of the right to use an appellation of origin may grant licenses for such use onlyto persons who distribute or sell his/her products. The relative license agreement shall nottake effect until approved and recorded by the MIIP.
In all cases the license agreement shall contain a clause stating expressly that the licenseemay use the appellation of origin only together with a registered mark owned by the licensor,which has previously been in actual use by licensor within Mexico.
The registration of a right to use an appellation of origin will be nullified when it wasgranted contrary to the legal provisions or when it was granted on the basis of false statementsor indications.
The registration of a right to use an appellation of origin will lapse if the registration is notrenewed in due time. The registration of a right to use an appellation of origin will be cancelledif the owner of the right to use the appellation of origin uses the same in a manner differentfrom that established in the declaration of protection.
The names ‘Tequila’, ‘Mezcal’, ‘Olinalá’, ‘Talavera’, ‘Bacanora’, ‘Café Veracruz’, ‘Ámbarde Chiapas’, ‘Café Chiapas’, ‘Sotol’, ‘Charanda’, ‘Mango Ataulfo del Soconusco Chiapas’,‘Chile Habanero de Yucatán’ or ‘Vainilla de Papantla’ may not be used when the conditionsestablished in the respective declarations are not met, by reason of which the appellation oforigin was authorized.
The use of an appellation of origin without the proper authorization or license is consideredan administrative offence, punishable with fine (up to 20,000 days of the minimum wageprevailing in the Federal District, and, additionally, up to 500 days of said general minimumfor each day that the offence continues), temporary closure of the enterprise concerned for upto ninety days, permanent closure of the enterprise concerned, and administrative detentionfor up to thirty-six hours. A second or further offence after the first penalty for such offenceas an administrative offence has been levied, is deemed a criminal offence, punishable withimprisonment (two to six years) and fine (from 100 to 10,000 days of the minimum wageprevailing in the Federal District).
Appellations of origin protected in other countries are not governed by the Mexican Lawof Industrial Property, but may be governed by the provisions of the Lisbon Agreement forthe Protection of Appellations of Origin and their International Registration of 1958, of whichAgreement Mexico is a member.
Declarations issued and authorizations granted, as well as any instrument amending orterminating the duration or effects of the rights granted with respect to appellations of origin,will be published in the official Industrial Property Gazette issued by the MIIP.
2,303.33Filing and registration fee, to be paid on application for registration........
277.21
Examination of an amendment of any document, print, label, or forfurnishing additional information relating to trademark applications,either voluntary or following a request of the Institute.......................
137.77Study of a petition requesting extension of a term, per month................
2,433.41Renewal fee, both if for the class for which the mark has been used or if
for a different class....................................................................
317.37Recordation of a license agreement or of an amendment to a license
317.37Recordation of an assignment or merger............................................
(In force sinceOctober 2010)
1,360.81Filing a request of administrative declaration of infraction....................
(In force sinceOctober 2010)
317.37Recordation of a change of name.....................................................
(In force sinceOctober 2010)
1,360.81
Study and examination of a petition for cancellation of a registration, orfor a declaration of extinction, imitation, falsification or illegal use, foreach case and per defendant.........................................................
(In force sinceOctober 2010)
NILInformation whether a word mark is registered...................................
Fees in respect of advertising slogans:
614.77Filing and registration fee...............................................................
277.21Filing of each amendment of documents or furnishing of additional
317.37Recordation of a change of name of owner or applicant........................
(In force sinceOctober 2010)
NILInformation whether an advertising slogan is registered........................
Fees in respect of trade names:
528.37Filing and publication fee...............................................................
277.21Filing of each amendment of documents or furnishing of additionalinformation..............................................................................
137.77Study of a petition requesting extension of a term, per month................
137.77Requesting extension of a term, per month.........................................
752.05Renewal of registration as authorized user.........................................
349.57Recordation of assignment of authorization to use the appellation or of
merger of authorized user............................................................
605.16Recordation of a license granted by authorized user.............................
Note: The Value Added Tax, at the rate of 16%, must be added to the above-mentioned fees.
Transitional Provisions
The following transitional provisions of the present Law of Industrial Property (in force since28 June 1991, and amended with effect from 1 October 1994) may be mentioned:
(1) The present Law has repealed the Law on Inventions and Marks of 1976–1986; however,this old Law will continue to apply with respect to the criminal offences committed whileit was still in force (without prejudice to the provisions of Article 56 of the Penal Code
for the Federal District in matters under common jurisdiction and for the entire Republicin matters under Federal jurisdiction).
(2) The present Law also has repealed the Law on the Control and Registration of the Transferof Technology and the Use and Exploitation of Patents and Trademarks of 1982 and theRegulations of 1990 to this Law.
(3) It will no longer be necessary for the purpose of Article 24, section XI of the IncomeTax Law, to prove recordation at the National Registry for the Transfer of Technologyof deeds, contracts or agreements relating to technical assistance, transfer of technologyor royalties.
(4) Registrations of marks and authorizations for use of an appellation of origin based onthe old Law of Inventions and Marks will continue to be effective and retain their term;in all other respects, they will be subject to the present Law and its implementingRegulations.
(5) The effects of the publication of trade names made under the old Law before 28 June1991 will retain their duration under that Law, but in all other respects will be subjectto the present Law.
(6) Administrative declarations which were pending on 28 June 1991 shall continue to beprocessed and will be resolved in accordance with the provisions of the old, repealedLaw on Inventions and Marks.
Specific Trademark Issues
Re-registration of removed mark. Under the present Law a mark removed from the Registermay immediately be re-registered by any party.
The MIIP may, on request of the competent authorities or ex officio, declare the registrationand use of marks for any product or service compulsory, or forbid or regulate the use of amark (whether registered or not) in the following cases: (a) if the use of the mark is an elementassociated with monopolistic, oligopolistic or unfair competition practices, which cause seriousdeviations in the distribution, production or commercialization of certain products or services;(b) if the use of the mark impedes the effective distribution, production or commercializationof goods or services; and (c) if, in cases of national emergency and during such circumstances,the use of the mark impedes or hinders the production or distribution of the basic commoditiesfor the people or raises the prices thereof or impedes or hinders the rendering of services inconnection therewith.
A pending administrative litigation action before the MIIP of any kind will lapse if noaction has been issued by the Institute during a year. In order to prevent such lapse a petitionshall be filed each year when no office action was issued during the preceding year, askingthe Institute to continue the prosecution of the action.
If not provided for otherwise, the rules applicable to patents will apply mutatis mutandis toutility models.
SUMMARY
Duration of Registration
– Duration is 10 years from filing date.
Registrable / Not Registrable
– Any products, apparatus or tools that, as a result of a modification in their arrangement,configuration, structure or form, may perform a different function with regard to theparts composing them or present advantages with regard to their utility are registrable.
– Paris Convention 1883–1967;– Hague Convention Abolishing the Requirement of Legalisation for Foreign Public
Documents 1961 (effective for Mexico as from 14 August 1995);– Convention Establishing the World Intellectual Property Organization (WIPO Convention)
1967;– Patent Cooperation Treaty (PCT) 1970, in force for Mexico as from 1 January 1995;– North America Free Trade Agreement (NAFTA) in force as from 1 January 1994;– Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade
in Counterfeit Goods (TRIPS), in force as from 1 January 1995;– Free Trade Agreement executed with Costa Rica, in force as from 10 January 1995;– Free Trade Agreement executed with Colombia and Venezuela, in force as from
10 January 1995;– Free Trade Agreement executed with Bolivia, in force as from 10 January 1995.
Laws
– Law of Industrial Property (formerly Law on the Promotion and Protection of IndustrialProperty) of 25 June 1991, effective as from 28 June 1991, and amended by decree of13 July 1994 effective as from 1 October 1994, and lastly modified by decree of 26January 2006 effective as from 27 January 2007, covering patents, utility models,industrial designs, drawings and models, and lay-out designs of integrated circuits, tradesecrets, marks, appellations of origin, advertising slogans and trade names;
– Regulations to the Law of Industrial Property of 18 November 1994 (effective as from8 December 1994);
– Resolution of the Director General of the MIIP, establishing the Rules for filingapplications before the MIIP (in force as from 15 December 1994);
– Resolution of the Director General of the MIIP, establishing the Tariff for the Servicesrendered by the MIIP (last modification on 10 August 2009).
Definition
Any products, apparatus or tools that, as a result of a modification in their arrangement,configuration, structure or form, may perform a different function with regard to the partscomposing them or present advantages with regard to their utility.
Duration of Registration
The duration is of ten years from the date of filing the application, subject to the payment ofmaintenance fees; no extension.
Registrable / Not Registrable
Not registrable are:
– utility models that do not comply with the definition of a utility model;
– utility models lacking the required novelty;– utility models that cannot be applied in industry; and– utility models the contents or form or which are (is) contrary to public order, morality
or good customs, or violate(s) any legal provision.
Novelty
Not made available to the public anywhere in the world before the filing (or priority) date byoral or written description, by exploitation or by any other means of divulgation of information(absolute novelty requirement).Absolute noveltyAbsolute novelty is compulsory for utility models. The absolute novelty requirement appliesto all applications filed after 1 October 1994, and registrations granted thereon.
Requirements for Filing
As for patents, provided that in the case of a utility model application a drawing or drawingsmust always be filed and the claims must be only for apparatus or device.
Claims
Apparatus or device claims are allowed, the utility models do not protect the methods, somethod claims are not allowed.
Procedure
Under the amended law as applicable from 1 October 1994, applications for the grant of autility model are examined not only as to formal requirements, but also as to novelty andsubstance. The rules applicable for patent applications apply mutatis mutandis.
An applicant for the registration of a utility model may convert his/her application into anapplication for a patent or for the registration of an industrial design, if it would appear fromthe contents of the application that it does not relate to the type of protection applied for.Conversion may be made only within three months from the date of filing the application orwithin three months from the date conversion is requested by the MIIP. If an application isnot converted within the term granted by the Institute it will be deemed abandoned. Dulyconverted applications may retain their filing and priority dates.
Marking
Marking is compulsory in order to bring civil and criminal actions.
Licenses
As for patents. Licenses should be registered with the MIIP, in order to be effective againstthird parties. Compulsory licenses do not apply to utility models.
The following are considered utility models or industrial designs infringement:
(1) manufacturing or developing goods covered by a utility model or industrial designregistration without the consent of the owner thereof and without the appropriate license;
(2) offering for sale or distributing goods protected by a patent or by a utility model orindustrial design registration, in the knowledge that they have been manufactured ordeveloped without the consent of the owner of the patent or registration or without theappropriate license;
(3) reproducing or imitating industrial designs protected by registrations without the consentof the owner thereof or without the appropriated license.
Utility Model Applications Based on International Patent Application (PCT)
It is also possible to apply for the registration of a utility model in Mexico through aninternational application filed under the PCT. If a utility model registration is desired, thismust be indicated in Box No. V of the international request form (by writing ‘utility model’on the dotted line after the name ‘Mexico’).
If registration of a utility model is applied for in an international application, the provisionsapplicable for entering the national phase of the application in Mexico are in principle thesame as those applicable for an international patent application, provided that, instead of thenational fee for a patent application, the national fee for a utility model application is to bepaid. Utility model registration may be applied for in an international application instead ofthe grant of a patent, but not in addition to the grant of a patent.
Within three months from entering the national phase in Mexico of an international patentapplication, the application may be converted into a utility model application; likewise, aninternational utility model application may be converted into a patent application within threemonths from entering the national phase in Mexico. Furthermore, such conversion may bemade within three months if required by the Mexican Institute, provided the application hasnot yet become abandoned.
International utility model applications: Mexico is a member of the Patent CooperationTreaty (PCT) of 1970 since 1 January 1995. Consequently, utility model registration in Mexicomay be applied for in a PCT international application designating Mexico.
Fees
Table of official fees
In Mexican Pesos (MXP), as from 1 October 2010:
MXP
2,056.71Study and registration of an application for the registration of a utility model.......
824.35Study of each priority document..................................................................
2,074.99Filing fee for PCT applications according to Chapter I.....................................
1,213.76Filing fee for PCT applications according to Chapter II...................................
250.44Amendment of any document or for furnishing additional information...............
594.94Responding to official action......................................................................
137.77Each petition for requesting extension of a term, per month..............................
632.15Final fee for issuance of registry..................................................................
Annual fees under the new provisions as applicable from 1 September 1995 are to be paid forfive-year periods. During pendency of the application no annual fees need be paid; with thepayment of the final fees it is considered that all annuities due from the filing date through31 December of the year before the date of grant are paid. Together with the final fees, annualfees for five calendar years (the year in which the grant takes place, and the four followingyears) must be paid.
Thereafter, annual fees for the second five-year term are to be paid before or on theanniversary of the filing date of the application in the year concerned. An annual fee coversa full calendar year, irrespective of the date of filing of the application or the date of grant.The last payment of annuities may relate to less than five years, if the remainder of the termof the registration is less than five years.
The amounts of the annual fees as from 1 October 2010 are as follows:
1,016.91The 1st, 2nd and 3rd year, per year.....................................................(a)
1,065.78The 4th, 5th and 6th year, per year.....................................................(b)
1,224.77The 7th, 8th, 9th and 10th year, per year..............................................(c)
Further fees:
317.37The recordation of an assignment or merger..................................................
317.37The recordation of a license or of an amendment to a license............................
317.37Recordation of a change of name of applicant for or of owner of a utility model....
1,360.81On application for nullification...................................................................
Note: The Value Added Tax, at the rate of 16%, must be added to the above mentioned fees.
An industrial design drawing shall be understood to mean any composition of figures or linesthat is incorporated in an industrial product for ornamental purposes and that gives it a specialand individual appearance.
An industrial design model shall be understood to mean any three-dimensional form thatserves as a pattern or model for the manufacture of an industrial product, gives it a specialappearance and does not imply any technical effect.
Duration of Registration
The duration is of fifteen years from the date of filing the application, subject to the paymentof maintenance fees; no extension obtainable.
Registrable / Not Registrable
Not registrable are:
(1) Design drawings or models not complying with the definition of an industrial design ormodel respectively (see above, ‘Definition’).
(2) Designs and models lacking the required novelty.(3) Designs and models not being capable of industrial realization.(4) Designs and models with the form or contents of which would be contrary to law, public
order, public health or safety, morality or good customs, or would violate any legalprovision.
The two-dimensional designs are called ‘Industrial drawing Design’.The three-dimensional designs are called ‘Industrial Model Design’.Single deposits are allowed according to the Mexican Law, one per each design.Multiple deposits are not permitted, although the priority claimed in Mexico includes
multiple designs, during the substantive examination, the examiners require to divide indifferent applications, one per each design.
Novelty
Not identical or confusingly similar to a design drawing or model which is publicly knownanywhere in the world before the filing or priority date (absolute novelty requirement).
Assignments should be registered with the MIIP, in order to be effective against third parties.(As for Patents.)
Requirements for Filing
The requirements for registration are as follows:
(1) Application in duplicate, as for patents.(2) A graphic or photographic reproduction of the subject of the application or the
corresponding drawings.(3) An indication of the kind of the products for which the design or model is to be used.(4) Specification in Spanish, in duplicate, describing the figures of the drawings filed with
the application, and with one claim only, giving the title of the design or model andfollowed by the words ‘as referred to and illustrated above’. (No reference should bemade in the specification to the operation or the internal mechanism of the model.)
(5) Drawings, as for patents.(6) Type-plates, for the printing of the drawings.(7) Power of attorney, as for patents.(8) Specimen or model, to be lodged only if required by the MIIP.(9) If an assignee applies, deed of assignment as in the case of patents.(10) If Convention priority is to be claimed (priority term six months), same must be claimed
on filing, indicating country, date and number of the application whose priority is claimed;certified copy of basic application with translation into Spanish must be filed withinthree months from application date.
Procedure
Under the amended law as applicable from 1 October 1994, an application for the registrationof an industrial design or model is examined as to formal requirements, novelty and substance.If registration is granted, same will be published in the official Industrial Property Gazette.Opposition is not provided for, but nullification of a design registration may be requested.
An applicant for the registration of an industrial design or model may convert his/herapplication into an application for the grant of a patent or for the registration of a utility model,if it would appear from the contents of the application that it does not relate to the type ofprotection applied for. Conversion may be made within three months from the date of filingthe application or within three months from the date conversion is requested by the MIIP. Ifan application is not converted within the term granted by the Institute it will be deemedabandoned.
Publication / Deferred Publication / Public File Inspection
The Industrial Designs are published after granting, so there is no publication as application.It is possible to request a design search online (by electronic payment) and receive the
respective results by e-mail: http://eservicios.impi.gob.mx/
Nullity and Lapse
If a registration of an industrial design or model has been granted in contravention to the legalprovisions (e.g., if the design or model lacked the required novelty or was otherwise not
registrable), the MIIP may issue a declaration of nullity, either ex officio or at the request ofa third party or (in cases where an interest of the State is involved) at the request of the FederalPublic Prosecutor. Nullification on this ground may be requested at any time. Also on theground that the registration was otherwise granted contrary to the applicable Law on the dateof registration nullification may be requested at any time (but a nullification request based ondeficiencies in the power of attorney used for prosecution is not admitted). On the groundthat the application became abandoned during prosecution, or that the registration was due toinadvertence or error, nullification may be requested only within five years from the date ofpublication of the registration in the Industrial Property Gazette. Nullification worksretroactively from the date of filing the application.
Use Requirements
The present Law does not contain provisions as to the working of designs or the grant ofcompulsory licenses.
Marking
Civil and criminal actions may not be brought if the products protected by a design registrationwere not properly marked. Marking should read ‘Registrado’.
Infringement
The following are considered utility models or industrial designs infringement:
(1) manufacturing or developing goods covered by a utility model or industrial designregistration without the consent of the owner thereof and without the appropriate license;
(2) offering for sale or distributing goods protected by a patent or by a utility model orindustrial design registration, in the knowledge that they have been manufactured ordeveloped without the consent of the owner of the patent or registration or without theappropriate license;
(3) reproducing or imitating industrial designs protected by registrations without the consentof the owner thereof or without the appropriated license.
Prior user rights
As for patents.
Penal provisions
Such act is also deemed an administrative offence, punishable with fine (up to 20,000 daysof the minimum wage prevailing in the Federal District, and, additionally, up to 500 days ofsaid general minimum for each day that the offence continues), temporary closure of theenterprise concerned for up to ninety days, permanent closure of the enterprise concerned andadministrative detention for up to thirty-six hours. A second or further offence after the firstpenalty for such offence as an administrative offence has been levied is deemed a criminaloffence, punishable with imprisonment (two to six years) and fine (from 100 to 10,000 daysof the minimum wage prevailing in the Federal District).
The protection granted to industrial designs and models shall be without prejudice to anyprotection that may be conferred upon the creator under any other legislation. So, for instance,it is possible that a registered design is also protected by copyright, provided the requirementsfor copyright protection have been met.
Copyright is the set of privileges that the law recognizes and given to the creators ofintellectual works through writing, printing, spoken word, music, drawing, painting, sculpture,engraving, photocopy, cinematographing, broadcasting, television, disk, tape, videocassetteand by any other means of communication.
According to the Mexican Copyright Law, the works protected by this law are those originalcreations capable of being disclosed or reproduced in any form or means. However, in orderto ensure the full exercise of rights it is highly recommended registering with the NationalCopyright Institute.
Fees
Table of official fees
In Mexican Pesos (MXP), as from 1 October 2010:
MXP
2,056.71Filing and registration fee.........................................................................
996.28Fee for claiming a priority, each.................................................................
277.21Amendment of any document or furnishing additional information...................
594.94Responding to official action.....................................................................
137.77Each petition requesting extension of a term, per month.................................
Annual fees under the new provisions as applicable from 1 September 1995 are to be paid forfive-year periods. During pendency of the application no annual fees need be paid; with thepayment of the final fees it is considered that all annuities due from the filing date through31 December of the year before the date of grant are paid. Together with the final fees, annualfees for five calendar years (the year in which the grant takes place, and the four followingyears) must be paid. Thereafter, annual fees for five-year terms are to be paid before or onthe anniversary of the filing date of the application in the years concerned. An annual feecovers a full calendar year, irrespective of the date of filing of the application or the date ofgrant. The owner of the patent may pay two or more five-year payments in advance. The lastpayment of annuities may relate to less than five years, if the remainder of the term of theregistration is less than five years.
The amounts of the annual fees as from 1 October 2010 are as follows:
MXP
1,048.09The 1st to the 9th year, per year................................................................
1,118.33The 10th to the 15th year, per year............................................................
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