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COVID-19 postpones a historic change in the Industrial Property Law in Mexico

After several years of expectation, last November a project was presented before the Mexican Senate for a new Industrial Property Law that aims to update the current regulation, approved in 1991. This reform would also allow the country to adapt its legislation with Chapter 20 of the new Treaty between Mexico, United States and Canada (T-MEC) signed in 2018.

Unfortunately, due to the exceptional circumstances we are experiencing worldwide as a result of the pandemic, it is unlikely that this long-awaited Law will be approved in 2020. However, we are going to review the major changes that it raises in order to prepare ourselves.

Changes in the trademark regime

As for trademarks, the most significant novelty is the possibility of filing multi-class applications. It will then be possible to cover in a single request products or services that are included into different classes of the international classification.

This initiative would also establish the necessary regulatory support to modernize the online consultation, filing and processing system, and would eliminate the obligation to register the licenses for use granted to third parties for their enforceability.

Changes in the patent regime

The new Law aims to promote an ecosystem favorable to the development of scientific research and the promotion of technology in Mexico. It would integrate the figure of the complementary certificate to patents and extend the validity of utility models to 15 years.

The norm also intends to implement the Bollar Exception in Mexico, which allows to start the experimentation processes and obtain the necessary governmental authorizations to commercialize a product before a patent has expired.

The project also establishes as a new ground for nullity the lack of sufficient disclosure by the inventor and would allow the partial nullity of the registration. Finally, it would integrate a new express prohibition regarding inventions dealing with animal or human cloning.

Changes in infringement procedures

Finally, regarding the infringement procedures, multiple adjustments are also included. The most important, which would mark a change of era to be confirmed, consists in the power that would be recognized to the IMPI to condemn offenders to pay damages that may not be less than 60% of the sale value of the respective products.

Likewise, it would empower the PTO to impose fines for infringement of rights for a maximum value of USD 890,000, a value much higher than the current limit.

Authors

Lola Kandelaft
Lola Kandelaft, LL.M.
Associate Director
Bogotá