Amendments to Mexican IP Law – April, 2018

Appellation of Origin Term of Industrial Design Patents Updated Patent fees and Excess page fee

On April 27, 2018, new amendments to the Mexican IP Law and to the official fees came into force that affect different aspects of patent applications, industrial designs, utility models and appellation of origin and geographical indications. The most important amendments include modifications to the term of Industrial Design Patents in Mexico from 15 years to up to 25 years, renewable in periods of 5 years, the inclusion of geographical indications alongside the existing appellation of origin section of the Law, and the substantial reduction in fees for patent applications (including utility models and designs) but with the addition of a fee for excess pages after 30 pages.

We provide an overview of these amendments below. Should you have any questions regarding these changes, please contact us and we shall gladly provide assistance.

Industrial Design Patents

The term for industrial designs in Mexico will now be five years, counting from the date of the application, and this term can be renewed for successive five year periods of up to a maximum of twenty-five years. This is in contrast to the current fifteen year term. In addition, all granted and renewed industrial designs will be published in the official gazette. Each request for renewal must be submitted six months prior to the expiration date, and there is an allowable six month grace period. This amendment also eliminates the calculation of annuities, which is replaced by the renewal. The official fee for the final registration of an industrial design is US$390 plus our fee, which includes the payment for the first five years of validity of the design, counted from the submission date. The official fee for each renewal is US$400 plus our fee, for each subsequent five year term. The above applies to all applications submitted on or after April 27, 2018. If an applicant wishes to opt in to these new provisions for applications currently under examination, the applicant must submit a written request to the Mexican IP Institute within 30 business days, by June 11, 2018, indicating that this is so. This would include the publication of the application in the official gazette if the formal examination has not yet been concluded, and issuance under the new regulations, plus the potential for the extended 25 year term. However, this filing does commit or require the patent owner to extend the term of the patent when the time comes. There is no official fee for submitting this request, and our fee is US$65 per application up to three applications, and US$45 per application if this request is submitted for more than three applications. All currently granted industrial designs will retain their fifteen year term, provided the corresponding annuities are paid accordingly. The owner of said designs may request their renewal within six months of the original 15-year expiry date, and these designs may be renewed for up to two 5-year periods, for a maximum of a twenty five year term. The official fee for this request will be simply the cost of the renewal, plus our fee. This will also apply to all pending applications that were not converted as described above.

Appellation of Origin

Under the current amendment, appellation of origin is understood as the name of a geographical area or another name known to refer to the aforementioned area, which serves to designate a product as originating from it, when the quality or characteristics of the product are exclusively or essentially to the geographical environment. Similarly, a geographical indication refers to the name of a geographical area or other indication known to refer to said area, which identifies a product as originating from said area, when a certain characteristic of the product is attributable mainly to its geographical origin. Applications for these denominations can be submitted by those parties directly involved in the production of the product to be protected, associations of these parties, or government agencies or entities that contain the aforementioned regions. The official fee for filing these applications is US$105, plus our fee. These applications will undergo an examination procedure which includes the possibility of opposition by third parties, and once granted, can be used by anyone authorized by the Mexican IP Institute to do so; the official fee for submitting an opposition is US$252, plus our fee. Once granted, parties can request authorization for use of the denomination, for an official fee of US$56 plus our fee. Importantly, the Mexican IP Institute will recognize designations of origin or geographical indications protected abroad, in terms of International Treaties and in accordance with the provisions of recent amendments, as long as these meet all the requirements as set out in the National Law. The cost for recording a foreign denomination in Mexico is US$23, plus our fee.

Patent Applications

In general, the official fees for filing a patent application (including utility patents, industrial designs, and utility models) have been reduced by as much as 50%. However, there is now an excess page fee after 30 pages; in this case, the application form, the payment slip, and any additional documents submitted with the application (such as a power of attorney or assignment documents) count towards the page limit, in addition to the specifications, claims and drawings. In this respect, we are implementing measures to ensure a cost-effective submission of patent applications and shall request confirmation from you regarding the filing of non-essential documentation with the application. We note that that our filing fee remains the same and we will not charge additional fees for excess pages.

Other Amendments

In addition the amendments outlined above, several other changes have also been carried out. This is not meant to be a comprehensive list, but rather a summary of other important changes:
  • There is no anticipated publication for utility model applications
  • With respect to industrial designs, an independent creation will be understood as when no other identical design has been made public
  • Industrial designs whose characteristics differ only in irrelevant details will be considered identical
  • The period for submitting information regarding the patentability of an application is now two months, instead of six, after a patent application has been published
Should you have any comments or questions regarding the amendments to the Mexican IP Law as outlined above, please contact us and we will gladly provide further information.