Becerril Coca & Becerril SC updates

Plant inventions and patent eligibility trends
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 16 September 2019

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.

Intellectual property and public policy
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 09 September 2019

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.

Senate ratifies USMCA: overview of IP chapter
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 24 June 2019

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.

Change to IMPI's letters patent practice
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 03 June 2019

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.

Applicants beware! IMPI's new notification procedure is a trap
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 27 May 2019

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.

Multiple dependent claims: clarity over cost
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 15 April 2019

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.

New government brings changes for IMPI
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 01 April 2019

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.

Mexico moves towards new IP system
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 25 February 2019

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.

USMCA or NAFTA 2.0: what's really new for intellectual property?
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 03 December 2018

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.

Important amendments to Industrial Property Law: declarations of use
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 24 September 2018

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.

Important amendments to Industrial Property Law
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 10 September 2018

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.

IP Law reform: trademark cancellations based on bad faith
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 30 July 2018

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.

Right to free speech versus online copyright protection: are radical measures needed?
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 25 June 2018

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.

Preliminary injunction measures and bonds
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 09 October 2017

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.

Plant rights: protecting treasured national assets
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 14 August 2017

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.

Procedures and strategies for anti-counterfeiting
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 26 June 2017

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.

Is your unused trademark at risk of cancellation?
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 12 June 2017

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.

Protecting market-leading products from imitators
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 05 June 2017

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.

Keeping the record straight
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 15 May 2017

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.

Electronic filing: modernising IMPI
Becerril Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 24 April 2017

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.

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