MEXICO

• INTERNATIONAL TREATIES TO WHICH MEXICO IS SIGNATORY

  • International Treaties to which Mexico is signatory:

    • Paris Convention for the protection of Industrial Property
    • Patent Co-operation Treaty – PCT.
    • Agreement on Trade Related Aspects of Intellectual Property Rights –TRIPS.
• PATENT LEGISLATION IN MEXICO
  • • The Mexican legal system follows the Civil Law model
    • Patents in Mexico are governed by: Industrial Property Law of June 25 1991 as amended last by the Decree of December 26 1997.

    Patents are granted by the Mexican Patent Office – IMPI.

• BASICS REGARDING PATENTABILITY OF INVENTIONS IN MEXICO

  • Inventions may relate to products, processes or industrial applications.  Patents are therefore granted to inventions that:

    • Are New or Novel
    • Involve an inventive step
    • Comprise of a process or an Industrial application of the invention.

    For an Invention to be patentable, it should contain the following:

    (i).Novelty:   An invention is considered new or novel if it is not included in the state of the art.  State of the art consists of all the information available and accessible to the public prior to the date of filing for the patent application nationally or internationally by means of its description, use or any other method by which it may be known or utilised by experts in the field.

    (ii).  Inventive Step:  is, given the prevailing state of the art, it is not obvious to an expert in that field.  An invention is considered ‘obvious’ when it is within the grasp of a skilled person in that field of expertise & therefore to be expected from him.

    (iii).  Industrial Application:  of the invention would be ‘when the object of the invention may be produced, manufactured or used in any kind of industry including agriculture’

• INVENTIONS NOT PATENTABLE IN MEXICO

  • Inventions pertaining to the following:

    • Discoveries, Scientific Theories & Mathematical methods.
    • Aesthetic creations.
    • Substances already existing in nature and nuclear materials.
    • Charts  • Schemes, Rules, Methods for performing mental acts, playing games, doing business as well as Presentation of Information.
    • Programmes for Computers.
    • Inventions contrary to public order & morals.
    • Methods of treatment by surgery or therapy on humans and animals.
    • Prejudicial to the Interest or Security of the Nation.
• FILING REQUIREMENTS OF PATENTS IN MEXICO

  • (i). A formal request for the grant of a patent of invention .

    (ii). The name and address or head office of the applicant or his representative.

    (iii). Short adequate Title of the Invention to be patented.

    (iv). Summary of the invention and Priority data if any.

    (v). Description of the invention along with drawings if any.

    (vi). Claims along with Abstract

    (vii). Drawings necessary to understand the invention.

• EXAMINATION OF THE PATENT APPLICATION IN MEXICO
  • • Once the application is filed, the application is scrutinised for defence & security aspects.
    • The invention is patentability.
    • The patent application is unitary.
    • The priority is claimed appropriately.
    • The invention complies with the patentability conditions.
• RIGHTS OF THE PATENTEE IN MEXICO
  • • Patents with a term of 20 yrs.
    • Utility Models with a term of 10 yrs.    

     

    • Patents confer to its holders or his successors an exclusive right to work the invention.
    • Patentee may authorise such uses of the patent through a contractual agreement with interested parties as to import, rent out, deliver or sell the product patent .
    • He may authorise the working of the patent either by a manufacturer or by an importer.
    • Patentee may even assign, lease or licence the patent.
    • He is entitled to take legal action against infringers.
    • He is entitled to retain moral right over the invention as ‘the author of the invention’.
    • The patent can be pledged for which it has to be registered in the patent register to become effective.
• COMPULSORY LICENCES OF PATENTS IN MEXICO

  • The exclusive rights of the patentee over the patent are subject to certain limitations which are known as compulsory licences.  These are authorisations given by governmental authorities, independently of the will of the owners.

    It is pertinent to bear in mind that the patent shall lapse if the invention is not worked within two yearsfrom the grant of the first compulsory license or has been worked on anextent seriously disproportionate to the needs of the country.  Opportunity is given to the patent owner of working the patent within a period of one year from the date of the personal notification addressed to him.

    Compulsory licences are granted on the following grounds:  

     

    Where, after three years have elapsed from the date of grant of a patent,or four years from the filing date of the application:

    (i). the owner of the patent or his successor intitle has not worked the patented invention, either directly or throughone or more licensees, by producing in the territory of the State

    (ii). imported goods produced in a Member State of the European Union or ofthe World Trade Organization,

    (iii). has worked the said invention toan extent that is seriously disproportionate to the needs of the country,

    (iv). where the working of the invention has for more than three years beensuspended or so reduced that it is seriously disproportionate to the needsof the country;

    (v) where the patented invention cannot be worked without prejudicingthe rights in a patent granted on an earlier application.

    (vi). the license so obtained shall be non-assignable unless the patentrelating to the subsequent invention is assigned with it.

    (vii). The owner ofthe patent relating to the first invention shall be entitled, in his turn, to a compulsory license on reasonable terms for the use of the patentrelating to the subsequent invention.

    (viii). Any person who applies for a compulsory license under the foregoingparagraphs shall prove that he has first approached the owner of the patentand failed to obtain a contractual license from him on reasonable termsand conditions.

    (ix) These provisions of this Article shall not apply to patented inventionsbelonging to the Military Administration or to those kept secret.

    (x). A compulsory license may be granted where the working of an inventionis intended mainly to supply the domestic market.

    However,  

    (i). A compulsory license shall not be granted if the failure to work thepatented invention, or to work it adequately, is due to causes beyondthe control of the proprietor of the patent or his successor in title.

    (ii). Such causes shall not include the lack of financial means, and, if theproduct is widely circulated in foreign countries, the lack of demandon the domestic market for the patented product, or the product obtainedby the patented process.

    (iii). A compulsory license may be granted only against payment of faircompensation by the licensee to the proprietor of the patent or hissuccessor in title, and on condition that the person applying for thelicense gives the necessary guarantees that the invention shall be workedsatisfactorily in accordance with the terms laid down in the license.

    (iv). A compulsory license may not be granted to a counterfeiter of an invention.Compulsory licenses may be granted for a period not exceeding the remainingduration of the patent, and, except with the consent of the proprietorof the patent or his successor in title, may be transferred only togetherwith the licensee’s business, or with the particular branch of the businessin which the license is used.

    (v). The grant of a compulsory license shall not prevent the institution oflegal proceedings concerning the validity of the patent or the rightsderiving therefrom, including actions instituted by the licensee.

    (vi). The grant of a compulsory license shall not exempt the proprietor of thepatent or his successor in title from the obligation to work the invention.

    ParityPatents along with specialised Patent Lawyers and Patent Attorneys in Mexico, can assist you comprehensively with Compulsory Licence matters.

• PATENTS Cost of Registration in MEXICO