December 1, 2020

Mexico Enacts New Federal Protection of Industrial Property Law

By Antonio Campero

Mexico’s new Federal Protection of Industrial Property Law (“LFPPI” for its initials in Spanish) was published in the Official Journal of the Federation on July 1, 2020 and entered into force on November 5, 2020.  The LFPPI repealed its predecessor statute, the Industrial Property Law (“LPI” for its initials in Spanish), and contains numerous changes as compared to the LPI.

Below are the most relevant changes set forth in the LFPPI:

  • The Mexican Industrial Property Institute (“IMPI” for its initials in Spanish) is granted the authority to impose fines, to determine the amounts of the fines it imposes for infringements in administrative proceedings, and to collect payment and any other corresponding amounts due. Likewise, it grants the IMPI the authority to collect past due sums in accordance with the administrative execution procedures of Mexico’s Federal Tax Code.
  • The IMPI is granted the power to order the payment of damages suffered by an affected industrial property owner in administrative proceedings for the declaration of infringement, as well as the power to set the amount of such damages.
  • The LFPPI lengthens the term for utility patent models from 10 to 15 years.
  • It allows for the possibility of extending the terms of patents when unreasonable delays directly attributable to the IMPI occur while processing a patent registration application. Such a delay is defined as a processing period of more than five years between the date of filing the application and the date the patent is granted.
  • It eliminates the requirement to register license agreements for industrial property rights to make such license arrangements effective against third parties.
  • Trademarks, slogans and trade names continue to have a term of 10 years; however, under the LFPPI, the term will commence on the approval date rather than as of the date the application was filed.
  • The new law allows for the possibility of obtaining a partial cancellation and expiration of trademarks.

In the coming days and weeks, CCN will publish additional articles with further detailed analysis regarding this major new law.