Becerril Coca & Becerril SC
BC&B is an international law & business firm that offers advisory services in patent matter to companies from the transformation industry sector, such as the pharmaceutical, chemical and the electrical industries, among others, with the purpose of giving them support to protect the intellectual capital as well as to assist them in licensing their technology. Since then, we have been ground breakers and innovators in the form, substance and quality of our services in industrial property matter, copyrights and technology licensing.Show more
Arbitration & ADR
Tribunal dismisses all of investor's claims under NAFTA and orders him to pay more than $2 million in costsMexico | 17 September 2020
In 2016 Joshua Dean Nelson commenced arbitration against Mexico on behalf of Telefacil México, SA de CV and himself under the North American Free Trade Agreement (NAFTA). According to Nelson, the Federal Telecommunications Institute had prevented him from participating in the telecoms market by issuing measures that he alleged violated Chapter 11 of NAFTA. However, the tribunal recently rejected the claims and held that Telefacil owed Mexico $2.05 million in arbitration costs.
Since 11 March 2020 dispute resolution in Mexico has been significantly affected due to the COVID-19 crisis. In such exceptional circumstances, alternative dispute resolution has taken on greater importance, as it offers parties the chance to continue proceedings (with restrictions) as efficiently as possible without having to wait for the judicial branch to resume operations.
Over the past three decades, alternative dispute resolution (ADR) has increased in popularity to the point that most parties appear to prefer it to having the courts resolve their conflicts. The benefits of ADR are flexibility, reduced costs and the opportunity to actively participate in the resolution of the dispute. However, these benefits depend on the parties voluntarily honouring the commitments adopted during the ADR proceedings.
Precautionary measures are an essential way in which to preserve assets that are subject to dispute or ensure that a final award is enforceable. Arbitration offers many advantages over judicial proceedings. However, in practice, such measures need to be issued more quickly in order to achieve the objectives for which they are designed. Notably, under Mexican law, such measures are issued much faster and more effectively than those issued under the International Chamber of Commerce arbitration rules.
The Industrial Property Law is currently under revision in the Senate. Two legal initiatives proposed by different senators will have to be studied, but one of them is more likely to prevail because it has the support of the Mexican Institute of Industrial Property and aims to substitute the current law in its entirety. One of the proposal's most significant objectives relates to updating the eligibility criteria of biotechnology-related inventions.
In order to recover damages following a violation of their rights, industrial property owners must first file an administrative infringement action before the Mexican Institute of Industrial Property in order to obtain a declaration of infringement and then undergo a civil court trial. This process can take up to five years and rights holders often choose not to claim compensation. As such, a recent proposal aims to reform the process for recovering damages caused by a violation of industrial property rights.
The concept of plausibility has emerged in numerous prosecution cases in recent years, with global trends suggesting a shift towards treating it as an additional, standalone patentability requirement. However, some commentators have argued that plausibility should not be considered an independent patentability condition due to, among other things, the different criteria for evaluating plausibility.
The Mexican Institute of Industrial Property's examination criteria was previously consistent enough to provide patent applicants with legal certainty about the eligibility of plant-related inventions. However, recent changes to the criteria for these kinds of invention have resulted in uncertainty which may affect even the validity of already granted patents.
The National Development Plan 2019-2024 (NDP) was recently published, just a few days before the release of the Global Innovation Index. Unlike the previous version, the new NDP does not expressly mention patents or intellectual property. This is not a good sign for a knowledge-based economy ranked first in the world for creative goods exports.
Mexico recently became the first country to ratify the United States-Mexico-Canada Agreement (USMCA), Chapter 20 of which is one of the most comprehensive IP chapters in any trade agreement. Although the 2018 amendments to Mexico's IP laws provided for most of the specific rights required under the USMCA, the country still has a lot to do to provide for the obligations regarding geographical indications, data exclusivity, trade secrets and enforcement.
In 2018 the rules for notifying the issuance of a patent, utility model or industrial design application were amended. Thus, all notices issued by the Mexican Institute of Industrial Property (IMPI) must be published via the Official Gazette. In a broad interpretation of this reform, the IMPI now provides only digital copies of letters patent and utility model and industrial design registrations. While this interpretation may be inaccurate, it aligns with the global trend of digitalisation among IP offices.
The 2018 changes to the Mexican patent system are not looking promising for patent prosecution. By way of the amendments, the Mexican Institute of Industrial Property has implemented a new system whereby it will issue official communications to applicants through its Official Gazette instead of personally or by certified mail. Applicants should exercise extreme caution in order to avoid a loss of rights due to a failure to monitor and identify issued office actions.
The need to control costs in jurisdictions where government fees increase substantially based on the number of claims often forces patent practitioners to use various claim drafting strategies, including multiple dependent claims. However, multiple dependent claims must be drafted carefully, as there is a risk that they could be considered unclear or contain features which are inconsistent with those of the claims on which they are based.
The new government will have a significant impact on the Mexican IP framework. In particular, it has introduced numerous policy changes to fulfil its objectives of providing greater social benefits to marginalised citizens and promoting the economic development of indigenous communities. Among other initiatives, the Institute of Industrial Property will attempt to meet these objectives by promoting the protection of denominations of origin and geographical indications.
Much like with the North American Free Trade Agreement, the recently negotiated United States-Mexico-Canada Agreement is set to introduce significant changes to Mexico's IP system. Several legal and administrative changes have already reshaped the patent prosecution landscape, particularly with regard to inventions. Even more changes are expected as the new trade agreement is implemented over the next five years.
The IP chapter of the recently negotiated US-Mexico-Canada Agreement is one of the most comprehensive of all of the treaties negotiated by the parties to date. However, despite all of the criticism and buzz surrounding the chapter, will Mexico actually have to make that many changes to its existing patent system? In practice, the negotiated text appears to be more of a compromise not to change than a commitment to change.
Various amendments to the Industrial Property Law's trademark chapter recently entered into force. The amendments make a number of important changes, including introducing a requirement for trademark owners to submit a declaration of use within three months from the three-year anniversary of the granting of their mark's registration. If such declaration is not filed within this period, the registration will lapse. Several discussions have taken place in order to clarify the criteria that will apply in this regard.
A number of amendments to the Industrial Property Law's trademark chapter recently entered into force. Among other things, the amendments stipulate that a declaration of use must be submitted within three months of the three-year anniversary of the granting of a trademark registration. If such a declaration is not filed, the trademark registration will lapse. Other key changes concern non-traditional trademarks, coexistence agreements and letters of consent and certification trademarks.
The government recently approved a reform of the IP Law, which aims to harmonise it with international legislation. Some of the key amendments that will affect trademark litigation are the additions of Article 90(XXII), which establishes bad faith as a prohibition against obtaining a trademark registration, and Article 151(VI), which makes it possible to cancel a trademark registration obtained in bad faith.
The Supreme Court of Justice recently considered the legal relationship and boundaries between the right to free speech and the enforcement of copyright on the Internet and established four non-obligatory criteria which reflect that the Internet is a fundamental instrument for exercising free speech. Ultimately, excluding in exceptional situations, general restrictions on a website's operation on the basis of copyright infringement will not be considered constitutionally valid.
In IP rights proceedings, the Mexican Institute of Industrial Property (IMPI) often requires IP rights holders to pay a bond which will cover the damages that could be caused to the infringer following the imposition of preliminary injunction measures. A federal circuit court recently issued a criterion which recognises the right of parties to request the IMPI to adjust the initial bond so that it provides complete coverage for the damages that the provisional measures will cause.
As Mexico considers its dependence on the United States, it is timely to promote the protection of plant varieties developed in Mexico, as the proper protection of this type of asset will generate wealth, promote innovation and strengthen the economy. At present, 2,511 varieties of 63 species are registered under federal law. These figures are healthy; however, given the agricultural nature of the Mexican countryside, they should be much higher.
Depending on the matter involved, Mexico's IP laws – alone or in combination – provide rights holders with the necessary tools to take legal action against counterfeiting and seize illegal merchandise and obtain preliminary injunctions and seek appropriate remedies against infringement. A clever strategy will help rights holders to keep the costs of anti-counterfeiting initiatives down, while still ensuring that such activities are as effective as possible.
The Industrial Property Law establishes that rights holders can use a mark once they have obtained an exclusive right to do so by registering it with the Mexican Institute of Industrial Property. However, to maintain its validity, the registered mark must be used consistently. The consequences that trademark owners face with regard to an unused mark are serious, as they include cancellation.
Being a so-called 'market follower' is a common business strategy in today's consumption-based economy. Companies following this strategy imitate market leaders in a defined market or commercial sector in such a way that enables them to avoid direct confrontation and benefit from the leaders' innovation. While most countries' IP protection rules distinguish between what is and is not permitted with regard to imitation, in Mexico this distinction is unclear.
If the owner of a trademark, patent or design fails to notify the Mexican Institute of Industrial Property (IMPI) of a corporate change, legal consequences can arise. For example, if the owner of a trademark, patent or design does not notify the IMPI of a change of ownership, the new owner's right to defend its IP rights will be affected. Further, if the owner fails to notify the IMPI of a licensing agreement or security interest, the agreement will have no effect on third parties.
In the past 20 years, the Mexican Institute of Industrial Property (IMPI) has made it easier for IP owners to use online services. In March 2016 the biggest steps towards a serious change were taken – namely, the issuance of rules for electronic filing and the launch of the online patent and notification systems. However, there is still some way to go before the IMPI is completely paperless.
While innovation in life sciences is key, the efforts required to bring new drugs, devices and other healthcare technologies to market are increasingly burdensome. Accordingly, intellectual property plays a crucial role in protecting investments and incentivising healthcare innovation, although patent regimes often encounter difficulties with regard to patentable subject matter and the evaluation of inventiveness for new technologies.
The Mexican Institute of Industrial Property recently adopted a new rule stipulating that if a rights holder does not file for review or appeal the cancellation of a trademark, registration of the pending trademark will be granted within 45 working days, despite the fact that the decision will still be subject to appeal. It is unclear what would happen if suspension of the newly registered trademark were not requested and the cancellation action were revoked.
In light of the changing global regulatory landscape, patent owners are increasingly seeking stronger patent protection, including for patents that are already in force. Rights holders should therefore be aware of the available post-grant amendment procedures and the type of changes to the granted patent that are permitted in each jurisdiction. Mexican law explicitly allows such amendments to correct errors or limit the extension of the claims.
A legal framework comprising four separate laws governs counterfeiting in Mexico. These laws – alone or in combination – provide rights holders with the necessary tools to take legal action against counterfeiting and seize illegal merchandise, obtain preliminary injunctions and seek appropriate remedies against infringement.
For many years, IP management of government-funded projects in Mexico was non-existent. Mexican law was silent regarding both the ownership of such projects and the agreements governing how grant money was spent. Nevertheless, recent changes in innovation policy have mandated changes in the management of such projects in order to prepare for future innovation opportunities.
Increasingly, Mexican patents have a different (often broader) scope from their foreign equivalents due to opposition proceedings or post-grant reviews held abroad. This situation has led patentees to consider the post-grant amendment of the scope of such patents more often. However, patentees must consider certain issues when assessing the feasibility of amending the claims of a granted patent in Mexico.
Taking heed of technological developments, the Mexican Institute of Industrial Property (IMPI) has made the Mexican IP protection system easier to use and more efficient by introducing online filing and search systems. Fortunately – for both the IMPI and system users – recent statistics on the online trademark application filing and design search systems are especially positive and are likely to improve further in the coming years.
The increase in open innovation and the importance of collaboration in the business and scientific spheres have led to a growing need to deal with co-ownership. Some legal systems have clear co-ownership rules that are specific to IP rights. However, in Mexico, intellectual property is dealt with under the general rules applicable to all types of property, meaning that at times the provisions are not as clear as they could be.
In Mexico, a third party may challenge a patent through either an ex parte proceeding that applies to pending patent applications, or an inter partes proceeding that applies to issued patents. The administrative regime for challenging patent validity is largely similar to other major administrative opposition regimes. However, the Mexican system offers no direct judicial proceeding for challenging patents.
For inventions comprising multiple elements, any elements claimed in the application that are not described in the specification will lead to the failure of the application, as the inclusion of an extra element would unduly extend the scope of protection of the patent. But what happens when the application describes this extra element without providing examples?
The Federal Commission for the Protection against Sanitary Risk has published guidelines stating that the confidential information received with a health approval application is subject to protection against unfair commercial use and public disclosure according to the North American Free Trade Agreement and the Agreement on Trade-Related Aspects of IP Rights. However, the guidelines generate new uncertainties.
Several crucial laws govern counterfeiting in Mexico. Depending on the matter involved, these laws – alone or in combination – provide rights holders with the necessary tools to take legal action against counterfeiting and seize illegal merchandise, obtain preliminary injunctions and prosecute criminal, administrative and civil actions to seek appropriate remedies against infringement.
In order to reduce service times and costs, increase efficiency and transparency and improve the quality of services offered by the Mexican Institute of Industrial Property, an online system for trademark and industrial design applications has been implemented. However, the filing of applications through the new system is optional.
The term 'mnemonics' is normally associated with lists of information and their corresponding rhymes or phrases. However, the mnemonic function can also be applied for other types of information, potentially helping to reinforce the connection that consumers make between trademarks, slogans and other signs on the one hand, and the product or service - and their experience of it - on the other.
The Industrial Property Law provides for a 12-month grace period for the benefit of an inventor (or an inventor's successor in title) in respect of the disclosure of an invention, model or design. If a party attempts to secure a grace period after its application has been filed, the Mexican Institute of Industrial Property will normally refuse. However, the Federal Law of Administrative Proceedings may give applicants another option.
The scarcity of patent litigation in Mexico as compared to other jurisdictions has resulted in a lack of case law in several key areas of patent litigation. One such area is the situation where a product does not have all of the features of the claims of a granted patent, but is so close that it appears that a feature has been changed to circumvent patent coverage through the incorporation of an equivalent feature.
As in many other jurisdictions, the Internet has become one of the most problematic areas of IP rights violations. Time will tell whether a new form of proceeding, known as the 'online trial', will succeed in reducing the backlog in the court system and make it easier to bring cases against infringers. The success of other innovations, such as the creation of the IP Bench, gives grounds for optimism.
It is generally feasible to obtain patent protection in Mexico if method claims are amended to a 'Swiss-type' format . However, the Industrial Property Law has no equivalent of Article 54(5) of the European Patent Convention, which allows purpose-related product claims for a new medical use of a known substance.
Changes to Mexico's patent system will have significant implications for the pharmaceutical industry. Patent holders must now deal with an opposition system that will prevent unfair practices and eliminate delays in the patent prosecution process. Third parties without patent protection can oppose an application before it is granted and can initiate infringement actions if a patent holder abuses its rights.
In the fields of biotechnology, chemistry and pharmaceuticals, the inclusion of technical data in a patent application can be crucial in demonstrating the effect of a novel compound or use. However, independent inventors and even large companies may be unable to perform costly and time-consuming trials. If faced with an official request for supporting data, how should applicants respond?
IP legislation provides rights holders with the tools to take legal action against counterfeiting in order to seize illegal merchandise, obtain preliminary injunctions and bring criminal, administrative and civil actions to seek appropriate remedies against infringement. However, rights holders and their representatives must develop a prioritised strategy that allows them to move swiftly as soon as a violation is detected.
The Mexican Institute of Industrial Property is the body responsible for determining whether an IP infringement has taken place. However, the lack of regulation on the appropriate point at which to file a civil action for damages has resulted in confusion among rights holders, and the slow procedures for determining an infringement and obtaining compensation only encourage infringers.
Since the Mexican linkage system was created in 2003, only patents that protect an active substance per se have been included; other kinds of pharmaceutical patent, such as those granted to protect pharmaceutical compositions or formulations, have been excluded. However, the Supreme Court has overturned the Mexican Institute of Industrial Property's longstanding interpretation of this rule.
A bill to amend the Plant Varieties Law seeks to incorporate protection for phytogenic resources, limiting the health and environmental risks caused by their exploitation and establishing quality controls. However, other provisions of the bill would reduce the protection period for plant varieties and limit breeders' rights in ways that contradict Mexican IP law.
The Mexican Institute of Industrial Property has been improving the electronic services that it provides to the public. A number of new systems are available, free of charge, to facilitate the institute's treatment of industrial property matters by making it easier to consult and file information.
Mexico's influenza epidemic in April 2009 prompted the government to use the compulsory patent licensing provisions of the Industrial Property Law for the first time. Manufacturers of generic pharmaceuticals pressed the government to declare the outbreak a 'priority attention disease' within the meaning of the law. In response, many patent owners claimed that public utility licences were unnecessary.
Many Mexican examiners apply a special criterion for pharmaceutical trademarks: if a more recent trademark does not differ by at least three letters from an earlier mark for similar goods, registration of the recent mark will be denied. This is meant to prevent a successful applicant from being denied product registration under the Health Law, but is out of step with national and international practice.
The Senate is reviewing two bills to amend the Industrial Property Law, proposed by two different political parties. One bill proposes a fundamental review of the law, whereas the other aims to introduce a procedure for opposing patent grants and penalties for abusive practices in the enforcement of invalid patents.
Should applicants be discouraged by the rejection of a trademark application on the grounds that the trademark is descriptive of the goods or services in question? The Mexican Institute of Industrial Property often wrongly rejects trademarks in the form of compound foreign-language words on grounds of descriptiveness, but recent case law suggests that applicants can get such decisions reversed in court.
For over a decade Mexico has been nurturing a well-organized system for the protection of plant varieties. Proposed amendments to the Plant Variety Law would extend the term for breeders' rights and provide protection to essentially derived varieties.
Recent changes to the Health Supplies Regulations have dramatically affected the approval process for medicaments. They address the problem of inadequate definitions in the regulatory framework, reducing the confusion caused by interchangeable generics that had led to the development of a grey market. The changes will make it easier to enforce the IP data protection provisions of key international treaties.
The Industrial Property Law provides for the cancellation of trademark registrations on the grounds of prior use in Mexico or abroad. However, in exceptional cases the Mexican Institute of Industrial Property has refused to recognize use abroad and has rejected actions on these grounds, particularly when the plaintiff has used the mark in accordance with foreign regulations.
In recent years the Mexican Institute of Industrial Property has changed the way it receives and processes information relating to patents and trademarks. The changes demonstrate a wish to achieve the goal of helping enterprises to protect their investments in intellectual property.
A provision of the IP Law which states that witness testimony and personal statements are inadmissible in IP litigation unless submitted in writing has been found unconstitutional by the Supreme Court. Parties may now offer such evidence in hearings before the Mexican Institute of Intellectual Property.
The government has developed various measures to combat the effects of counterfeiting, but these have proved ineffective in the fight against this social phenomenon. However, the efforts of global companies to reduce costs and develop new distribution channels have had positive results.
In order to claim a priority right in a patent, trademark, industrial design or utility model in Mexico, an application form - and accompanying documents from any relevant overseas authority - must be filed at the Mexican Institute of Industrial Property. However, the US Patent and Trademark Office's introduction of electronic documents in 2004 has caused difficulties in the Mexican filing process.
The exclusion from patentability of method claims for contraceptive compounds due to lack of industrial applicability involves political, ethical and legal considerations. The IP authorities deem contraceptive compound method claims to be non-patentable, refusing to consider claims drafted in Swiss format, which emphasize the use of the compounds.
In an attempt to bring Mexican law and practice into line with advances in technological developments and the international changes in the field of industrial property, the Mexican authorities are working to further the adjustment and evolution of IP protection systems by various means.
Mexico is bound to protect the confidentiality of regulatory data filed with the Federal Commission for Protection against Sanitary Risks, which authorizes the commercialization of drugs or agrochemicals containing new chemical entities. However, cases in which generic drug producers have obtained information on a new product and filed it in a modified form demonstrate the need for greater protection.
According to the provisions of the Patent Cooperation Treaty, national phase entry in Mexico during the '31st month' does not satisfy the requirements of the International Bureau of the World Intellectual Property Organization, as Mexico has not expressly ratified the additional one-month period for national phase entry further to the standard 30-month period.
Although the protection offered by a utility model is not comparable to that provided by a patent, it plays an important role within the IP field in protecting particular creations which do not qualify as patents of invention. Protection for utility models in Mexico is provided by the Industrial Property Law, as amended, and the Regulations to the Industrial Property Law.
Inventors and companies often wish to distribute their technology, goods or services outside of their native country. Therefore, they need to know how monopolies can be sought from governments and the protection offered by different industrial property rights.
New technologies derived from the biological sciences, particularly those related to genetically modified organisms, present ethical concerns for patent offices worldwide. In Mexico, changes to the Industrial Property Law are needed to establish an ethical framework for the patentability of emerging technologies. Recently, the Institute of Industrial Property has been studying how to handle such ethical issues.
The competitive advantage that a firm possesses is a key factor in its growth and development, and may be achieved by finding, analyzing and exploiting the most useful technical information. There is a great variety of scientific and technological information sources available which gives an advantage to firms that can navigate them adeptly.
One of the most common problems among titleholders lies in how these owners use their trademarks, registered commercial slogans or commercial names published in the Gazette of the Mexican Institute of Industrial Property, with regard to both direct exploitation and how they are materially used when shown on goods or in establishments.
It is common for foreign and national applicants to play down the role played by the title in a patent application, and therefore to draft the title in a very casual manner. However, the Mexican Industrial Property Law provides legal requirements that must be observed. There are also commercial reasons to pay particular attention to the wording used to denote the invention.
Appropriate drawings are fundamental to the acceptance of a patent application in Mexico. However, careful consideration must be given to whether drawings should be modified and included as tables rather than figures. In addition, figures cannot contain any text apart from single words, which means that explanatory phrases must be excised or adapted.
Many legal obstacles and inconsistencies must be kept in mind when pursuing patent litigation in Mexico, and there are strong arguments that the legal regime needs reform. Although the creation of a specialized IP court is not currently feasible, it is ultimately the best way to protect IP rights and to comply with all international IP treaties signed by Mexico.
The Mexican Congress has passed amendments to the Industrial Property Law in regard to the compulsory licensing of drugs in instances where disease represents a national emergency. The amendments were modified from their original form in order to comply with international agreements. However, some believe they contain serious inconsistencies.
This update discusses the conditions surrounding trademark renewals, and the steps that trademark holders must take in order to maintain their trademark.
Recent changes in the law have improved the status of industrial property in Mexico. This update outlines ways in which patentees can enforce their patents.
A new Mexican Industrial Property Law is due to be enacted, which will improve the ways in which industrial property can be protected through litigation.
Because of the nature of the Mexican pharmaceutical industry, it is often very difficult to tell whether a drug is protected by a patent. As a result of this confusion, patent infringements – both accidental and deliberate – are common.
Although the Mexican Industrial Property Law does not allow patent protection for plant varieties, a new law on plant varieties provides protection for breeders of new plant species.