As far as patents are concerned, the law distinguishes between patents, industrial designs, and utility models. Design patents, as they are known in other countries, are regulated in Mexico as industrial designs. This chapter will focus on the existing regulations regarding patents in Mexico.

The law defines an invention as any human-made creation that transforms matter or energy in nature for human use and the satisfaction of specific needs. Inventions, regardless of their technological field, may be patented if they are novel, result from inventive step, and have industrial applicability. Patents can protect products, processes or both.

Inventions that are contrary to public order, violate any legal provisions, or cause harm to animals, plants, or the environment, cannot be patented. There is also an express prohibition on patenting cloning procedures, the modification of the human germline genetic identity, the use of human embryos, and the genetic modification of animals.

Discoveries, scientific theories or principles, mathematical methods, literary or artistic works, aesthetic creations, diagrams, plans, rules and methods for intellectual activities, games, or economic and commercial activities, as well as business methods, computer programs, ways of presenting information, biological and genetic material found in nature, and the mere juxtaposition or combination of known inventions or products — unless these combinations or integrations result in a new functionality, altered properties, or an industrial application not obvious to someone skilled in the field — cannot be considered inventions.

The rights granted by a patent shall not have effect, among others, in the following cases:

• In relation to scientific research or technological activities that are not for commercial purposes. 
• The use, making, sale, or importation of a product covered by a current patent, solely for the purpose of conducting tests, obtaining information, and experimental production necessary to obtain licenses for drugs used for human health. 
• The marketing, acquisition, or use of the patented invention by a third party after the invention has been lawfully introduced into commerce. 
• Prior use. 
• The use of the invention in transport vehicles from other countries that are part of those vehicles, when these are in transit within the national territory.
• In the case of patents relating to living matter, the use of the invention as an initial source of variation or dissemination to obtain other products, unless such use is made repeatedly. 
• The use of the invention, or plans to use it, during the rehabilitation period of the patent.

The right to obtain a patent belongs to the inventor. If the invention is created jointly by two or more persons, the right to obtain the patent or registration shall belong to all of them jointly. If several persons independently create the same invention, the person who files the corresponding application or claims the earliest priority will have the superior right to obtain the patent, provided that the application is not abandoned or refused. Patent applications, as well as granted patents, may be licensed and transferred. 

A patent is valid for 20 years from the filing date and cannot be extended, subject to the payment of the corresponding annual maintenance fees.

Impediments

Possible impediments to obtaining a patent include:

• defects that prevent full or partial understanding of the subject matter of the application; 
• material that cannot be considered an invention;
• material that cannot be patented; or 
• lack of industrial application.

Invalidations

A patent will be invalidated:

• When the protected material is not considered an invention, or when the invention is not patentable, lacks novelty, inventive step, or industrial applicability. 
• When the invention is not disclosed in a sufficiently clear and complete manner such that it can be reproduced by a person skilled in the art. 
• When the claims exceed the disclosure contained in the application as it was initially filed with the Institute. 
• When the patent is the result of a divisional application and includes claims that do not comply with the legal provisions governing divisional patents. 
• When, due to a rectification or limitation proceeding, the material protected by the patent has been expanded. 
• When priority rights were recognized in patents where the novelty or inventive step of the material protected was unduly determined. 
• When granted contrary to the public domain or involving double patenting. 
• When granted to a party not entitled to obtain it. 

Partial invalidations are allowed. 

Lapse

Patents will lapse:

• Upon expiration of their term.
• For nonpayment of the relevant fees to maintain the validity of their rights, or within a grace period of six months thereafter.
• After a period of two years from the granting of the first compulsory license, if that compulsory license does not resolve the lack of exploitation, or if the patent holder does not demonstrate its exploitation or provide evidence of a just cause.

The reinstatement of a patent that has lapsed for failure to pay the due fees may be requested, provided that the relevant request is submitted within six months following the grace period, and all outstanding fees, including any surcharges, are paid.

Infringements

Grounds for infringement include:

• Presenting non-patented products as if they were patented. If the patent has lapsed or been declared invalid, an infringement will be deemed to have occurred one year after the date of lapse or, as the case may be, the date on which the declaration of invalidity became final.
• Manufacturing or producing a product covered by a patent, utility model, or industrial design registration, without the consent of its owner or without a proper license.
• Offering for sale, putting into circulation, or using a product that incorporates a patented invention, without the consent of its owner or without a proper license.
• Using patented processes without the consent of the patent owner or without the relevant license.
• Offering for sale or putting into circulation a product resulting from the use of patented processes, where such processes were used without the consent of the patent owner or the party holding a license for exploitation.

Provisional measures, mediation, penalties, and damages regarding patent infringement are governed by the provisions set forth in the relevant subchapters on trademarks of this article.

Compulsory licenses 

Any person may request the granting of a compulsory license for the exploitation of a patent after three years from the date of granting of the patent, or four years from the filing date of the application, whichever occurs later, when no exploitation of the patent has been carried out, unless there is a justifiable cause for such omission. 

Public utility licenses

For emergency or national security reasons, and for as long as such reasons persist, including serious disease outbreaks requiring priority attention, the competent authority will decide on the exploitation of certain patents through the granting of public utility licenses. 

Public utility licenses are non-exclusive and non-transferable.

Definition of distinctive signs

The Federal Law for the Protection of Industrial Property (LPIP) defines a mark as any sign perceptible by the senses and capable of being represented in such a way that allows the clear and precise determination of the object of protection, distinguishing products or services from others of the same kind or class in the market. 

Registrable distinctive signs

The following may constitute a mark: denominations, letters, numbers, figurative elements and combinations of colors, holograms, three-dimensional shapes, trade names and corporate names or business names, the personal name of a natural person, sounds, smells, numerous operational or image elements including, among others, size, design, color, shape arrangement, label, packaging, decoration or any other elements that, when combined, distinguish products or services in the market (trade dress), and the combination of all the above except trade dress. Acquired distinctiveness is now recognized by the law.

Grounds for refusal

Possible grounds for refusal include the following:

• lack of distinctiveness (signs in the public domain, common use or determined by their functionality);
• descriptiveness;
• isolated letters, digits or single colors;
• translations, transliterations or arbitrary spelling variations of non-registrable words;
• imitation without authorization of coats of arms, flags, emblems, titles, initials, symbols, names of projects or programs used by governmental or non-governmental organizations, official seals, coins, banknotes, decorations, medals or awards at officially recognized exhibitions, fairs, conferences, cultural or sporting events;
• identity or confusing similarity to geographical areas, maps, place names, demonyms or any name or adjective which indicates origin, names or adjectives when it indicates the origin of goods or services and may cause confusion or error regarding their origin;
• identity or confusing similarity to appellations of origin or geographical indications when the goods or services to be covered are identical or similar to those protected by appellations of origin or geographic indications;
• identity or confusing similarity to names of private property;
• confusing similarity leading to risk of association or deceptiveness with names, surnames, aliases, pseudonyms, portraits or signatures of famous, prestigious or recognized individuals as well as identity or confusing similarity with titles of literary or artistic works;
• reproduction, in whole or in part, of literary or artistic works;
• reservation (reserva de derechos al uso exclusivo) of rights regulated by the Federal Copyright Law;
• misleadingness or deceptiveness regarding the nature, composition, qualities or company or government origin, of the products or services to be distinguished;
• confusing similarity to pending or registered marks as well as to famous or notorious marks; and
• bad faith.

Co-existence of marks

Either identical or confusingly similar marks to others for similar products or services may be registered if there is written consent by the holder of those previously registered.

Lack of effect of registration

A registered mark will have no effect:

• against a third party who has continuously used it or a confusingly similar mark in good faith over the same or similar goods or services prior to the filing date or date of first use of that registered mark;
• if there is exhaustion of rights once the goods covered by a registration have been lawfully introduced in the market by the owner of the mark or their licensee (parallel imports are allowed in Mexico); or
• against an individual or entity who has continuously used their name or trade name to distinguish similar or identical goods or services to those covered by an identical or confusingly similar registered trade name.

Additional goods or services

Products or services cannot be added to a registration that has already been granted. In this case, a new application must be submitted. 

Renewals

A mark registration is in force for 10 years (counted from its grant date) and may be renewed for periods of the same length, indefinitely. Renewal petitions may be filed either six months prior to the expiration date of the registration or within the following six months. Failure to renew results in a registration lapsing without the need for a statement from the Mexican Patent and Trademark Office (MPTO).

Declarations of use

All registrations granted after August 10, 2018 must declare use within the three months following their third anniversary. When submitting the declaration, the holder of the corresponding registration must indicate the specific products or services to which use of the mark has taken place. The scope of protection of the registration will continue only for those indicated in the declaration. 

International Registrations with Mexican designations granted prior to August 10, 2018 must declare use within the three months following the publication of their renewal by WIPO.

Failure to declare results in the registration lapsing without the need for a statement by the MPTO.

Well-known (notorious) and famous marks

A mark is considered to be well-known in Mexico when a certain sector of the public or commercial circles in the country recognizes it as a result of commercial activities carried out in Mexico or abroad by whoever uses the mark in connection with their products or services, or as a result of the promotion or advertising of the same.

Famous marks are defined as those that are known by the majority of consumers, or when they have global commercial recognition or dissemination. Famous and well-known marks are protected regardless of their registration.

Notoriety or fame can be either estimated or declared by the MPTO. A declaration of notoriety or fame by the MPTO will take place if sufficient evidence proving the knowledge and recognition of the mark is submitted. Once the corresponding resolution is issued, it remains in force for a five-year term. Should the conditions of such declaration subsist, the declaration may be updated at any time upon the request of a party with standing provided they demonstrate that the conditions giving rise to it subsist as of the date of the relevant request.

First to file

Mexico holds a “first to file” system, granting rights to the person who first files an application. Prior use can only be asserted as a means of defense or as a cause of invalidation and, in both cases, this is done through contentious proceedings.

Oppositions

Upon receiving a trademark application, the MPTO must publish it in its official gazette, so that within a one-month term, any third party with standing may oppose the granting of the registration. After expiration of this term, with or without opposition, the examination of the application will follow.

The opposition must be filed in writing, accompanied by relevant evidence, as well as proof of payment of the applicable fees. The outcome of the substantive examination carried out by the examiner cannot be prejudged by it.

Should an opposition to the application arise, it will be served on the applicant. Should a provisional refusal be issued, the same will also be served on the applicant who will have a two-month term with an automatic extension of two more months to produce their response. Failure to do so causes the application to be considered abandoned; abandoned applications cannot be revived. 

Once the applicant has responded to an opposition, both parties may present final arguments within a term of five days; pronouncement of the resolution then occurs. This resolution may either deny the registration or grant it. A resolution denying registration or declaring an opposition to be unfounded may be appealed before the Federal Administrative Courts.

Licenses

Registered marks or pending applications may be licensed to one or more individuals or entities. Their recordal is no longer mandatory for the owner of the marks to benefit from their use by the licensee(s), as long as there is a presence in the market of the products or services covered by the mark and the same are available to consumers.

If so, provided in the corresponding agreement, licensees may take any legal actions to protect the mark as if they were the owner themselves.

Franchises

A franchise is deemed to exist whenever, along with a license of use for a mark, technical knowledge is imparted, or technical assistance provided, in order for the franchisee to produce or sell products or provide services in a uniform manner and according to the operational, commercial and administrative methods of the owner of the mark, preserving the quality, prestige and image of the products or services distinguished therewith. 

Whoever grants a franchise must give the potential franchisee, at least 30 days prior to the execution of the respective agreement, relevant information on the condition of their business. Lack of truthfulness in the information provided confers on the franchisee, aside from the ability to request the invalidation of the agreement, the right to claim payment of damages and losses incurred due to non-performance. 

Assignments

Registrations or pending applications may be assigned from their holder. Registered marks or pending applications owned by a single holder will be deemed linked if they are identical and cover similar goods or services, or if they are confusingly similar and covering identical or similar goods or services. Should the holder deem there is no confusion, they may request the dissolution of the link. 

Unless otherwise agreed, the merging of entities transfers the rights of registered and pending marks. 

Invalidation of registrations

A registration will be invalidated if:

1. It was granted contrary to the provisions of the law.
2. There has been prior use in Mexico or abroad of an identical or similar registered mark over the same or similar goods or services it covers. Partial invalidations may be declared.
3. False data regarding the date of first use is included in the application.
4. There is a confusing similarity between an application previously filed or a registration previously granted, covering the same or similar goods or services. Partial invalidation of the registration may be declared.
5. It was obtained by agents, legal representatives, users or distributors or any related party to the owner of a registered mark abroad, and applied to the same or similar goods or services without the consent of the owner of the foreign mark. 
6. It is applied for or obtained in bad faith.

The actions listed in items 2, 3 and 4 above may be asserted within five years from the effective date of publication of the registration in the MPTO’s Gazette. Those mentioned in items 1, 5 and 6 may be asserted at any time.

Lapse of registrations

A registration will lapse:

• If there is failure to renew.
• If there is failure to declare use.
• Due to lack of use during three consecutive years immediately preceding the request for an administrative declaration of lapse, over the goods or services covered by the registration. Should use be proven over some of the goods or services protected, a partial cancellation may be declared.

Cancellation on the grounds of genericness

The cancellation of a registration for a mark will proceed if its owner has provoked or tolerated its transformation into the generic name for one or several of the goods or services it covers.

Provisional measures

At the request of the claimant, the MPTO may adopt provisional measures such as: ordering the withdrawal from circulation of infringing products; seizing packaging materials, wrappers, containers, stationery, advertising materials, advertisements, signs and utensils; prohibiting commercialization of infringing products; ordering the detention of infringing goods; ordering the suspension of infringing activities; imposing border measures with the intervention of customs authorities; ordering the suspension, blockage, removal of contents or cessation of infringing acts committed through any means, whether virtual, digital or electronic; and, ordering the suspension or closure of infringing establishments.

Mediation

In proceedings seeking a declaration of infringement, either party may request mediation, at any stage, provided that no resolution has been rendered. Mediation and attendant negotiations do not suspend the contentious proceeding. An agreement reached by the parties ends the proceeding and may be enforced immediately.

Infringements related to marks

Examples of infringement include:

• appearance of trademark registration when none exists;
• unauthorized use of marks confusingly similar to registered ones over the same or similar goods or services;
• unauthorized use of marks identical or confusingly similar to well-known or famous marks;
• unauthorized use of commercial names, trade names or domain names identical or confusingly similar to a registered mark over the same or similar goods or services or vice versa;
• unlawful use of non-registrable signs;
• use of an altered product or label covered by a mark;
• use of an altered mark;
• confusion by association with a trade dress; 
• unauthorized use of an identical or confusingly similar slogan to a registered one for advertising the same or similar goods or services.

Penalties

Infringements are penalized with fines, which may be increased if the infringement continues, as well as temporary and permanent closures.

Damages

Indemnification of the affected party for the violation of their rights will not be less than 40% of the legitimate value indicator presented by that party and may be claimed, at their choice, before the MPTO or directly with the Courts. 

Trademark offenses

Mexican federal law provides additional protection for the trademark system through three types of criminal liability, namely:

• The counterfeiting of registered trademarks for the purpose of commercial speculation.
• Producing, storing, transporting, introducing into the country, distributing or selling for the purpose of commercial speculation, objects bearing counterfeit trademarks, as well as knowingly providing or supplying in any way raw materials or inputs for the production of objects bearing counterfeit trademarks.
• Selling to any final consumer on roads or in public places, in a fraudulent manner and with the purpose of commercial speculation, objects bearing counterfeit trademarks protected by the law.

Independently of the exercise of the criminal action, the injured party for any of the offenses referred to in the law may demand, from the perpetrator or perpetrators, the reparation and payment of the damages derived from such offenses.

Mexico is a party to the following international treaties and agreements covering copyright:

• Berne Convention for the Protection of Literary and Artistic Works.
• Brussels Act Supplementing the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886, completed at Paris, 1896, Berlin 1908, Berne 1914, and Rome 1928.
• Universal Copyright Convention, 1952.
• Universal Copyright Convention, 1971.
• Convention on Literary and Artistic Property.
• WIPO Copyright Treaty.
• WIPO Performances and Phonograms Treaty.
• International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations.
• Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms.
• Treaty on the International Registration of Audiovisual Works.
• Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled.
• Nairobi Treaty on the Protection of the Olympic Symbol.
• Inter-American Convention on the Copyright in Literary, Scientific and Artistic Works.

Copyrights are governed by the Federal Copyright Law, which provides protection to creators of original works in various artistic, literary, and scientific fields. Mexico follows the “automatic protection principle”, meaning that a work will be protected upon its creation, as long as it is original and fixed in a tangible medium. No requirement for registration is needed although having it can serve as evidence of authorship and date of creation of the work should a legal dispute arise. The competent authority regarding copyrights is the National Copyright Institute.

Fair use, reproduction for personal use, use for educational institutions and quotations or excerpts of copyrighted material without authorization or payment of royalties are permitted, provided the source is cited.

Mexican law recognizes moral and economic rights.

Moral rights

Moral rights include the claim of authorship, preventing modifications or changes to the work that could harm the author’s reputation or honor, withdrawing a work from circulation and demanding proper attribution of the work. Moral rights are perpetual and cannot be waived. 

Economic rights 

Economic rights are transferable and entitle the author to reproduce, distribute, perform and display their work, to license or transfer rights to it and to create derivative works and/or to authorize derivative works by third parties. They last for the life of the author plus 100 years after their death. Once expired, they become part of the public domain and can be exploited without consent or the payment of royalties.

Copyright enforcement methods in Mexico include civil, infringement and criminal actions and available remedies include injunctive measures, claim of damages and destruction of illegal copies.

Trade dress is defined as set out above in Section 2, Trademark, Registrable distinctive signs. It is regulated in the same way as any other type of trademark. 

The right of publicity is regulated by the Federal Consumer Protection Law; discussion of this is beyond the scope of this chapter. 

A trade secret is defined as any information related to industrial or commercial applications that is kept confidential by the entity or individual with legal control over it. This information is used to gain or maintain a competitive or economic advantage over third parties in the conduct of economic activities. The holder of the trade secret must adopt adequate measures or systems to preserve its confidentiality and restrict access to it. Trade secrets can be documented in various forms, including but not limited to, written documents, electronic or magnetic media, optical discs, microfilms, tapes, or any other means, whether current or future, of recording or storing information.

Information that is already in the public domain or readily ascertainable by a person skilled in the relevant field based on publicly available information, or information that must be disclosed by law or judicial order, will not be considered a trade secret. Further, information provided to an authority by the holder of a trade secret, or pursuant to a legal requirement, will not be regarded as being in the public domain, provided the purpose of the disclosure is to obtain licenses, permits, authorizations, registrations, or other official acts.

Misappropriation of a trade secret refers to the unauthorized acquisition, use, or disclosure of such information in a manner that violates accepted industry standards and practices, constituting unfair competition. This includes the acquisition, use, or disclosure of a trade secret by a third party who knew, or should reasonably have known, that the trade secret was obtained through improper means or contrary to established industry practices.

The following actions will not be considered to be misappropriation:

• Independent discovery or creation of information claimed as a trade secret;
• The observation, study, disassembly, or testing of a product or object that has been made publicly available or is lawfully in the possession of the person obtaining the information, provided that they are not bound by a confidentiality obligation regarding the trade secret; or
• The lawful acquisition of information from another party who is not under a duty of confidentiality and who did not know, or should not reasonably have known, that the information constituted a trade secret.

Licensing

A person in possession of a trade secret may transfer or grant authorization for its use by a third party. The authorized user will be bound by an obligation to refrain from disclosing the trade secret in any form or manner.

In agreements involving the provision of technical knowledge, technical assistance, or basic and detailed engineering services, confidentiality clauses may be included to safeguard the trade secrets covered under the agreement. These clauses must clearly specify the aspects of the information deemed confidential.

Unauthorized access, disclosure and use, as well as theft of a trade secret, in addition to constituting administrative breaches, may give rise to criminal liability.

See above, Section 3, Copyright, Moral rights.

Not applicable.