In a few weeks, there will be a major reform to the IP regulation in Mexico. The new Law, named Federal Law for the Protection of Industrial Property, hereinafter new IP Law, was enacted on July 1, 2020, and it will come into force from November 5, 2020.
A new regulation in this regard is the result of a long trilateral diplomacy process. After 26 years, the North American Free Trade Agreement (NAFTA) has practically ceased to exist as of July 1, 2020 and has been replaced by United States-Mexico-Canada Agreement (USMCA). The Agreement provides a chapter intended for strong and effective protection and enforcement of IP rights critical to driving innovation and creating economic growth.
The new IP Law includes provisions concerning the prosecution of inventions which are summarized in the next paragraphs.
Priority claim. To claim the right of priority, the applicant must show a certified copy of the priority claimed and the translation into Spanish, to at the latest within a period of three months from the filing of the application in Mexico. Moreover, the applicant may withdraw a priority claim made in an international application, at any time before the expiration of the thirty-month period from the priority date, in terms of the provisions of the PCT Regulation. Certainly, this will not constitute the extension of a term that has expired, including that of the national phase entry.
It should be noted that Mexico does not allow priority right restoration, nor extension of the 30-month period for entering the national phase.
Double patenting. During the substantive examination and when granting rights, the Institute must ensure by the public domain and prevent double patenting of the same invention. What is more, the new IP Law establishes that no patent will be granted in respect of matter that is already protected by another or whose essential technical features are a non-substantial variation of the matter covered by itself, even when the applicant is the holder of the first patent.
Complementary certificate. If during prosecution of a patent there are unreasonable delays, directly attributable to the Office for a period of more than five years, between the filing date of the application in Mexico and the granting of the patent, at the request of the interested party, may grant a complementary certificate to adjust the validity of the same. The validity of said certificate will be a maximum of 5 years.
Bolar exemption. In the new IP Law, the right conferred by a patent shall not produce any effect against a third party that uses, manufactures, offers for sale, or imports a product with a valid patent, exclusively to generate tests, information, and experimental data necessary for obtaining sanitary registries of drug products for human health. However, the new IP Law remains silent regarding the period within the exemption shall be observed (actually, it is considered the time established by the secondary health regulations, that is, three years and eight years for chemical and biotechnological medicaments before the patent term expiration date, respectively).
Restrictions about divisional applications. When a lack of unity objections is issued divisional application can be filed, however, some restrictions are now included. In the case of divisional applications submitted, voluntarily or by the requirement of the Office, the applicant must claim an invention different from that claimed in the initial application and, where appropriate, in other divisional, without exceeding the scope of the original invention. Moreover, an invention or a group of inventions cannot be claimed again in the initial application or in the one that gave rise to the division, if applicable. Moreover, the divisional application cannot consist of the division of other divisional applications, unless this is appropriate according to the Office. These provisions arise due to the current practice according to which the applicant can choose the invention which should remain in the first application.
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