Modifications to the Intellectual Property Legislation in Mexico

Photo By: Adolfo Félix

Derived from the USMCA, on July 1st, 2020, the following decrees were published in the Official Federal Gazette, after being approved by the Mexican Congress on June 29th, 2020 and June 30th, 2020:

- The abrogation of the Industrial Property Law and issues the Federal Industrial Property Protection Law.

- The amendments and additions of several rules to the Federal Copyright Law.

- The revisions and additions of various provisions to the Federal Criminal Code.

As well, the Metrology and Standardization Law was abrogated and replaced by the Infrastructure Quality Law was also issued. We highlight that according to the Metrology and Standardization Law, NOM-051-SCFI/SSA1–2010 and its recent modification was published.

In the new Federal Industrial Property Protection Law, which will enter into force 90 days after its publication, November 5th, 2020 we highlight some amendments concerning the previous legislation:

- The IMPI will have to ensure the public domain of inventions and prevent the double patenting of inventions.

- The possibility of obtaining complementary certificates to the validity of the protection due to unreasonable delays in the patent application (for a maximum period of five years).

- The extension of the validity of utility models from 10 to 15 years.

- The validity of trademarks and trade names will be 10 years from their registry and not from their filing.

- The IMPI will have the possibility of requesting the nullity of a trademark registration if the holder does not comply with the applicable commercial laws of the products or services it provides.

- The opposition proceeding from the point of view of the applicant is extended.

- IMPI will require the owner to file the declarations of use granting a period of two months.

- The opportunity of partial non-use declaration of the trademark due to lack of proof of use.

- The option to request before IMPI damages for infringements.

The claim and direct collection of damages for infringements may be made before IMPI once it has the necessary budgetary, human and material resources, which will be at the latest one year after the entry into force of the Federal Law on Protection of Industrial Property.

As for the reforms to the Federal Copyright Law, we highlight the regulation on:

- Technological protection measures.

- Incorporation of Notice & Takedown procedure.

- Granting of rights to performers.

- Extension of rights to producers of phonograms.

- Increase in administrative sanctions for copyright infringements.

The Federal Criminal Code was amended to include as a crime conducts that infringes copyright and related rights.

Undoubtedly, these modifications represent a paradigm shift in some aspects of intellectual property, especially from the new Federal Industrial Property Protection Law and the technology measures adopt by the Federal Copyright Law. As right holders, we must take full advantage of the new provisions and, in any case, respect the intellectual property of others.

To consult the decrees in Spanish, please follow:

- Federal Industrial Property Protection Law

- Federal Copyright Law

- Federal Criminal Code

- Infrastructure Quality Law

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