Amendment To The Federal Law For The Protection Of Industrial Property

Taken together, these changes seek to make proceedings before the Mexican Institute of Industrial Property (“IMPI” for its initials in Spanish) more efficient and streamlined.

The main pillars of the amendment are as follows:

1. New maximum timeframes

It establishes the following maximum timeframes for the issuance of decisions:

• 1 year for patent, industrial design, and utility model applications.
• 5 months for applications for the registration of distinctive signs.
• 3 months for trademark renewal applications.
• 5 months for applications of origin and geographical indications.
• 2 months for the recordal of licenses and/or franchises.

2. Provisional patent applications and reinstatement of rights

The amendment introduces the concept of provisional patent applications, inspired by the systems in the United States and Europe. This mechanism allows inventors to secure a filing date for their developments while completing the technical and formal requirements, with a twelve-month grace period to convert the application into a definitive filing.

Additionally, the amendment formalizes the restoration of priority and reinstatement of rights, measures that facilitate the recovery of proceedings interrupted due to formal issues and align Mexican practice with the standards of the Patent Cooperation Treaty (PCT).

3. Pharmaceutical patents: supplementary protection certificates due to regulatory delays

The amendment adopts the possibility of granting supplementary protection certificates for pharmaceutical patents in cases of unreasonable delays in obtaining the corresponding marketing authorization from the Federal Commission for Protection against Sanitary Risks (COFEPRIS). The purpose is to compensate for the loss of effective exclusivity caused by prolonged regulatory procedures.

4. Distinctive signs: technical expansion and new prohibitions

The catalog of protectable signs is updated to include position, motion, and multimedia trademarks.

In addition, the following prohibitions are introduced:

• Registration of signs reproducing or evoking elements of cultural heritage or traditional expressions of Indigenous and Afro-Mexican communities is prohibited, unless authorized by the relevant community assembly.
• Registration of titles of publications or periodicals, fictional characters, or stage names is restricted without the consent of the holder of the corresponding rights reservation.

5. Trademark examination procedure

It expressly establishes that trademark applications are subject to a two-stage examination process—formal examination and substantive examination—which must be conducted by IMPI in a sequential manner.

6. Administrative infringements: improper association with mass events (“ambush marketing”) and artificial intelligence

The amendment expands the catalogue of administrative infringements by adding subsection (e) to section II of Article 386, as follows:

“(e) The existence of an official sponsorship relationship between a distinctive sign and a public or private mass event.”

With this addition, the amendment expressly addresses conducts that create confusion regarding the existence of an official sponsorship relationship between a distinctive sign and a mass event.

Furthermore, the amendment clarifies that infringing conduct will be sanctioned even when carried out through artificial intelligence. This provision does not constitute an independent ground for infringement, but rather a clarification applicable to the conducts set forth in Article 386.

7. New procedure: ownership claim

The amendment introduces a specific mechanism allowing the rightful owner of a patent or registration for a utility model or industrial design to claim ownership over a patent or registration granted to a party not entitled to obtain it, thereby establishing an administrative route to correct improper ownership situations.

8. Legal representation: new authority regarding powers of attorney

The amendment expressly grants IMPI the authority to require the submission of documentation evidencing the powers of the grantor of a power of attorney where there is reasonable doubt regarding the instrument referenced therein.

9. New IMPI powers in technology transfer and inclusive language

IMPI’s role in technology transfer is strengthened by granting it broader powers to promote innovation, advise on licensing and assignments, and collaborate with academic and business institutions to foster the commercialization of technological developments.

Additionally, the law has been entirely redrafted using inclusive and gender-neutral language.

Conclusion: the amendment introduces more agile management tools while also imposing greater responsibilities on rights holders, requiring adjustments in the planning of industrial property strategies.

Finally, the amendment incorporates drafting and consistency changes across various provisions to harmonize the law with international industrial property practices. It also strengthens IMPI procedures and consolidates the link between legal protection, innovation, and economic development.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.