The new Federal Law on the Protection of Industrial Property enters into force in Mexico

November 2020

On November 5th, 2020, in view of the entry into force of the #USMCA, #ACEUM, (July 1, 2020) and the #HagueAgreement (June 6, 2020), Mexico launches its new FEDERAL LAW FOR THE PROTECTION OF INDUSTRIAL PROPERTY.

Improved in many aspects, the new Law formalizes much of the common practice that had been handled previously in the Mexican Institute of Industrial Property and gives order and structure to a previous Law that, although it was innovative in its beginnings, was also subject to a large number of reforms that, over the years, an integration and updating was necessary to comply with the commitments acquired by Mexico by belonging to the aforementioned treaties.

In the field of patents, the main highlights are (i) the recognition of partial nullities of a patent and the inclusion of two new chapters that are (ii) Complementary Certificates, to allow the extension of their validity up to 5 years due to delays unjustified by the Institute; and requests for (iii) the resignation, rectification and limitation of rights on a voluntary basis which will be rejected if a procedure is pending regarding the validity of the patent or model. Further, important highlights will show significant effects on biological inventions, such as (iv) the explicit recognition of the patentability of second uses of any previously known substance, compound or composition; and (v) in relation to the so-called “Bolar Clause” it is noteworthy that it will not be subject to a specific and enforced period of validity of a patent. The latter has the effect that the generation of tests, information, and experimental production necessary to obtain certificates of medicines for human health can be carried out at any time, even while a relevant patent is still in force.

Thus, the new Law contains several important changes that will need to be specified in a new Regulation, not yet available, which is specifically designed to clarify the details of how the new provisions will be complied with.

Karla Vazquez, PhD

Partner, MEXICO