March 21, 2018
CHANGES TO INDUSTRIAL DESIGN PROTECTION IN MEXICO
A series of amendments to the Mexican Industrial Property Law (LPI) were published in the Official Gazette of the Federation on March 13, 2018, and will take effect on April 25, 2018. The amendments were proposed by the Mexican Institute of Industrial Property (IMPI), and reflect commitments made by Mexico under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, and negotiations for the modernization of several trade agreements.
The amendments concern the protection of geographical indications and industrial designs. This newsletter will focus on changes to industrial design practice. We will discuss geographic indications in our next newsletter.
The amendments will apply to all applications filed on or after April 25. To summarize:
Term of protection. The initial term of protection will be reduced from 15 years to 5 years, counted from the filing date of the application. Registrations will be renewable for additional terms of 5 years, up to a maximum of 25 years from the application filing date.
Publication. All industrial design applications will be published in the Industrial Property Gazette once formal examination is complete. (Under current law, industrial designs are published only when the registration is granted.) The prosecution history will be publicly accessible once the application is published. The applicant may not request that publication be suspended or postponed.
Novelty defined. The amendments provide a more comprehensive definition of novelty. A design will be considered “novel” if it is (i) independently created; and (ii) differs significantly of known designs or combinations of known designs.
A design will be considered “independently created” if it is not identical to preexisting designs. “Irrelevant details” will not be considered in this determination.
In determining whether a design differs significantly from known designs, the Examiner will consider the general impression made by the design on a person skilled in the art, in view of relevant prior art. Some courts interpreting the current law held that designs should be considered from the standpoint of an ordinary observer.
Industrial applicability. Current law requires applicants to identify the genre of products to which the design will be applied. The amendments will require the applicant to identify the specific product to which the design will be applied.
Pending applications. Current law will still apply by default to applications pending on the effective date of the amendments. However, applicants will have the option of requesting examination under the amended provisions. The request must be filed by June 7, 2018. The filing of the petition will trigger publication of the application.
Granted design registrations. Existing industrial design registrations will remain in force for an initial term of 15 years from the application filing date, subject to the payment of annuities, and will be eligible for renewal for two additional terms of 5 years.
IMPI is expected to publish an amended fee schedule shortly. A proposal to amend the trademark provisions of the LPI is currently before Congress, and is expected to be enacted before the presidential election in July 2018.