The COVID-19 pandemic has evidenced the need for an efficient and safe system for the electronic prosecution of patent applications and has forced the Mexican Institute of Industrial Property to make such a system available for applications originally filed in paper format. However, as this article shows, the path to this outcome has not been straightforward.
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.
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.
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.
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 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.