Mexico Law Industrial Property

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Law grants moral and property rights to author, regarding literary and artistic works. Moral rights include recognition of capacity of author as such and right to exploit and modify work. Such rights are perpetual, inalienable, non-prescribable, may not be surrendered or attached. Proprietary rights include exclusive right to exploit work personally or by authorized third party. Proprietary rights remain in force for author's life plus 75years, and 75 years after publication in case of posthumous works. Proprietary rights are assignable for period no longer than 15 years except when nature of work or size of required investment justify otherwise and, except for publication rights of computer programs and books.

Works Protected.- Protection is granted in respect to literary, dramatic, dance, sculpture, comics, graphic design, musical, pictorial, architectural, photographic, and cinematographic works; computation programs: works for broadcasting and television, and any other works which, by analogy, can be regarded as artistic or literary productions; computer and database programs, compendium of works such as encyclopedia, anthologies and others such as databases to extent they have originality of their own. These works remain protected, even without registration. Law protects adaptations, arrangements, translations, compendium, paraphrases, collections and transformations of literary and artistic works, which have originality of their own to extent of such originality, but can be exploited only with authorization from original owner of work. Performers, book editors, phonograph and video producers are protected for 50 years.

Notice.- Every copy of protected work's must display phrase, "Derechos Reservados," or abbreviation "D.R.", followed by symbol ©, name and address of owner, and year of first publication. Absence of these requirements does not destroy copyright, but publisher may be liable.

Limitations of Author's Rights- Publication or translation of literary or artistic works necessary or helpful to advancement of public education or national culture is considered matter of public interest. Secretary of Education may authorize publication or translation, subject to prior payment of compensation when consent of holder of proprietary rights cannot be obtained.

Registration- Agreements creating, modifying, transferring or extinguishing proprietary rights must be in writing and recorded in Public Registry of Copyrights.
Reserved rights are granted for one year, renewable, for periodical publications, and five years for characters, persons or groups who engage in artistic activities and advertisement promotion. Reserved rights include: rights to use and exploit in exclusive manner.

Foreigners enjoy same rights of national authors according to law and international conventions.
Violations of law are sanctioned by administrative fines and copyright crimes are punished by penalties established in Criminal Code.

Arbitration is regulated by law and may be used for resolution of dispute arising out of rights protected by law.

The Intellectual Property Commission (Comision Intersecretarial para la Proteccion, Vigilancia y Salvaguardia de los Derechos de Propiedad Intelectual) is in charge of overseeing proper application, compliance with and enforcement of intellectual property law. The Commission is empowered to impose "exemplary sanctions".

Treaties.-Mexico signed inter-American Convention on Copyright and Literary in Washington, June 22, 1946, promulgated by Presidential Decree which was of Oct. 3, 1947, and also ratified Universal Copyright Convention and became bound by it on May 12, 1957, and by Decree of Aug. 11, 1975, ratified revision of July 24, 1971 of this Convention made in Paris. By Decree of Sept. 20, 1974, Mexico ratified Act Paris of Berne Convention for protection of literary and artistic works of July 24, 1971.

(Law to Promote and Protect Industrial Property of June 27, 1991 as amended and Regulations of Nov. 18, 1994)

Instituto Mexicano de la Propiedad Industrial is government agency in charge of industrial property matter.

New inventions susceptible of industrial application, including processes and products, are patentable. Following, among others, are not patentable: (i) uncovering of anything which already existed in nature; (ii) computation programs; (iii) surgical treatment methods; (iv) artistic works; and (v) variations of known products. Owner of patent may sue for damages any person who exploits patented process or product without owner's approval.

Application may be filed by inventor, by his rightholder or by representative. Priority rights of foreign applications are recognized provided that application is filed within 12 months following filing date in foreign country or pursuant to terms set forth in applicable international treaties.

Law establishes general rules for granting of licenses and transfer of right's conferred by patents. Transfer of rights to be effective vis-A-vis third parties, must be registered.

Patented invention is not exploited for industrial or commercial purposes by owner during three years counting from granting date or four years from application date whichever is later, third parties may request Patent Office granting of "compulsory license (licencia obligatoria) to exploit patented invention, which will be granted if patentee or registered licensee do not exploit invention within one year from request of compulsory license. When patented products are imported, such importation is regarded as effective exploitation of respective patent.

Patents expire, and therefore fall within public domain: (i) at end of term stated in law; (ii) when annual fees are not paid; or (iii) for lack of exploitation. Utility Models are defined as objects. implements, apparatus or tools which, as result of modification in their disposition, structure, or configuration, have different function with regard to integral parts thereof or render different advantage as far as their utilization is concerned. Utility models may be registered for term of ten years counting from application date.

Industrial designs include both drawings and industrial models. Drawings must be related to industrial product. Industrial models must serve as basis for manufacturing of industrial products. Industrial designs are registerable for term of 15 years, commencing on application date.

Trade secret is defined as confidential information of industrial or commercial application that provides competitive or economic advantage to owner. Information considered trade secret must be expressed in documents, laser discs, microfilm films, by electronic or magnetic means or similar instruments.

Layout-designs of integrated circuits (topographies), protected as from Dec. 26, 1997. Exclusive rights for ten years counted as from filing date are obtained through registration at Mexican Institute of Industrial Property. Conditions for registration are originality and novelty. Originality should be construed as layout-design that is result of intellectual efforts of creator, which is not common among creators and manufacturers of topographies. Right to obtain registration shall be barred when layout-design has been exploited in Mexico or abroad more than two years prior to filing date in Mexico. Prosecution consists basically in performance of formal examination only since examination as to substance is not contemplated in statute.

Conventions.-Convention for the Protection of Industrial Property, Paris. Mar. 21,1883, Stockholm Revision of July 14, 1967; Patent Cooperation Treaty with Regulations, Washington, June 19, 1970; Agreement on Trade-Related Aspects of Intellectual Property Rights, Marrakech, Apr. 15, 1994.

Vegetable Species.-(Federal Law of Vegetal Species of Oct. 3, 1996).
Vegetable species are protected when they are novel, distinguishable, stable and homogeneous. When registered, certificate of holder is issued for 15 and 18 years, depending on type of vegetal variety. Rights are assignable and may be encumbered. Certificate grants holder exclusive right of exploitation, but compulsory license may be granted in case of declared emergency or for no exploitation during last Wee years from date of certificate.

(Law to Promote and Protect Industrial Property of June 25, 1991 as arn'd; and regulations of Nov. 18, 1994). The law protects trademarks and commercial slogans and names. Translations into other languages of words which are not registrable may not be registered. Among others, the following are not registrable: technical names: isolated letters; numbers or colors; geographical denominations; and cities or literary works. A trademark may not be extended to additional products or services other than the registration.

The Instituto Mexicano de la Propiedad Industrial is a government agency in charge of industrial property matters.

Registered trademarks enjoy protection for a term of ten years. Such aterm may be renewed for terms of ten years. If the mark registration is requested by two or more persons, rules governing use, license, transfer of rights, voluntary cancellation and voluntary limitation of goods or services covered by trademark registration must be attached to application. Priority rights of foreign applications are recognized as provided by international treaties. If there are no international treaties, the proiority date is recognized if application is made within six months from application date in the country of origin. Resolutions on registration of trademarks, as well as renewals, licenses, change of name and assignments thereof, are published in the Official Gazette of Industrial Property.

An applications for extension of registration of trademark must be made by the owner within six months prior to the expiration date plus six-month grace period. If the trademark is registered in order to protect two or more classes of products or services, the renewal of registration in any one of such products or services shall be effective to cover all other products or services if fees are paid for the other classes.

The owner of a trademark or pending application may grant a license to use a trademark, which license must be registered to be effective visa-a-vis third parties. Products sold or services rendered by a licensee must meet same quality standards as products manufactured or services rendered by licensor. When the license is registered, the licensee has a right to institute legal proceedings to enjoin falsification, imitation or illegal use of the trademark unless there is an agreement to the contrary. Franchise (franquicia) exists under Mexican Law when technical knowledge and assistance is transferred along with license for use of trademark. The franchisor must provide franchisees ample information about business prior to execution of a franchise agreement.

The rights deriving from a mark application and trademark registration may be mortgaged or transferred pursuant to general principles contained in Civil and Commercial Codes. To be effective vis-a-vis third panics, atransfer must be registered. For purposes of transfers of rights, Mexican law regards registration of trademarks as "associated or linked" (marcas ligadas) when such trademarks belonging to the same person are identical and cover similar products or services or when these trademarks are confusingly similar and apply to the same products or services or to similar products or services. In such instances, the owner of a trademark must transfer all or none of the associated trademarks except when the Institute considers that dissolution of association of marks will not cause confusion or deceit to consumers upon explanation and request of owner to that effect.

A registration of trademark is null and void when (i) the registration was obtained against provisions of the Law on Industrial Property; (ii) the registration was granted based on false declarations in the application: (iii) the same or a confusingly similar trademark had been used in Mexico or abroad in order to cover the same or similar products or services by a third party prior to the filing date or date of first use declared in the application of registered trademark; (iv) yhe registration was granted in error notwithstanding existence of previous registration for the same or a confusingly similar trademark; and, (v) the distributor, licensee, representative or agent of the owner of a foreign registration applied for and obtained registration of the same or confusingly similar mark in its own name, in which case the registration shall be deemed as obtained in bad faith. Certain statutes of limitations apply.

Commercial slogans are defined as "phrases or sentences the purpose of which is to advertise public commercial or industrial establishments or businesses, as establishments and businesses which provide services, to distinguish them from others of the same kind." Registration of a commercial slogan is granted for a term, counting from the date of the filing application. Such a registration may be renewed for a term of ten years.

The commercial name of an industrial or commercial business or establishment or of a business or establishment for rendering of services is protected, without requirement of rigistration, in those geographical areas where the business or establishment has customers or the entire country if there is constant and significant advertising and promotion at a national level. Anybody using a conunercial name may request a publication thereof in the Official Gazette of Industrial Property. Such a publication establishes good faith in use of that name. The effect of publication of a commercial name lasts ten years counting from the applicantion date and can be renewed for terms of ten years.

The Mexican State is the owner of denomination of origin and such denomination of origen may only be used by means of authorization. Denomination of origin is defined as the name of a geographical area of the country which identifies the product as originally from that geographicall area, when quality and characteristics of the product are due exclusively to the graphical region including natural and human elements. Companies or individuals engaged in the extraction, production or manufacturing of products linked with geographical areas may request authorization to use the denomination of origin.

The authorization to use a denomination of origin lasts ten years counting from the application date, and renewable for periods of ten years. The right to use a denomination of origin may be transferred by the licensee, but such a transfer shall be effective vis-a-vis third parties as from the moment of registration.

The Federal Courts enjoy jurisdiction to determine criminal sanctions and fines established in Mexican law, as well as to resolve disputes of a mercantile or civil nature arising from an application of the law. The fraudulent use of a trademark on a commercial scale and revealing and unauthorized use of trade secrets are crimes. Sanctions provided by the law are imprisonment and fines.

Conventions.-Convention for the Protection of Industrial Property, Paris, March 21, 1883, Stockholm Revision of July 14, 1967; Agreement on Protection of Denomiations of Origin and its international registry, Lisbon, Oct. 31, 1958; Agreement on Trade Related Aspects of Intellectual Property Rights, Marrakesh, Apr. 15, 1994.

We have just recently received an update from O L I V A R E S & C I A., dated November 6, 2001, regarding the Mexican Institute of Industrial Property fees increase.

They advised us that on October 17, 2001, the tariff of charges for services rendered by the Mexican Institute of Industrial Property (IMPI), was published in the Federal Government Gazette and it shows a quite substantial increase that in many instances reaches 100%. It appears that the Mexican Association of Attorneys for the Protection of Industrial Property (AMPPI) was quite surprised with this new tariff as IMPI, contrary to usual practice, had not advised the association about enacting a new tariff of charges. (2002 update - there have been discussions with the authorities and there will be some reductions for a period of time)The new IMPI fees became effective as of November 15, 2001. Below is a copy of this new tariff, translated into English.

MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY
TARIFF FOR TRAMITS AND SERVICES (in U.S. Currency at approx. 10 Pesos to 1 Dollar)

_______________________________________________________________________________

ARTICLE 1 For the services rendered by the Institute regarding patent matters, the following fees are payable:

1a For filing patent applications including the services referred to in Article 38 of the Law (examination on the merits of the invention). 1,057.00

1b For entry into the National Phase of a patent application in accordance with Chapter I of the Patent Cooperation Treaty (PCT). 789.00

1c For entry into the National Phase of a patent application in accordance with Chapter II of the Patent Cooperation Treaty (PCT). 526.00

1 f For the change of text or drawings of an issued patent, for amending errors imputable to the applicant as well as limiting the scope of the claims, each time the same is applied. 70.00

ARTICLE 2 For each annuity of maintenance of patent rights, the following fees are payable:

ARTICLE 3 For reviewing a compulsory license application or for the modification of its conditions.334.00

ARTICLE 4 For reviewing the reinstatement application of a lapsed patent because of failure to timely pay the corresponding annuity. 335.00

ARTICLE 5 For the conversion of a patent application into a utility model or industrial design application, or vice-a-versa. 178.00

ARTICLE 6 For the interposed reconsideration against a rejected patent. 352.00

CERTIFICATES OF INVENTION

ARTICLE 7For each annuity of maintenance of lights of certificates of invention, the following fees are payable:

ARTICLE 8 For reviewing an application of authorization of exploitation of a certificate of invention or of an application of modification of its conditions, when it is filed by a person who has the exploitation authorization, per application thereof. 335.00

ARTICLE 9 For the services rendered by the Institute related to utility models and industrial design matters, the following fees are payable:

9a For filing utility models or industrial design applications including the services referred to in Article 38 of the Law (examination on the merits of the invention).265.00

9b For entry into the National Phase of a utility model application in accordance with Chapter I of the Patent Cooperation Treaty (PCT). 229.00

9c For entry into the National Phase of a utility model application in accordance with Chapter II of the Patent Cooperation Treaty (PCT).152.00

9d For the issuance of the title certificate of a utility model or industrial design.82.00

9e For filing application for registering integrated circuit topographies, as well as for the services referred to in Article 38 of the Law,until theconclusion of the prosecution thereof, or if applicable, the issuance of the Letters Patent 347.00

ARTICLE 10 For each annuity of maintenance of rights for utility models, the following fees are payable:

ARTICLE 11 For each annuity of maintenance of rights for industrial industrial designs, the following fees are payable:

ARTICLE 12 For reviewing the reinstatement application of a lapsed utility model or industrial design because of failure to timely pay the corresponding annuity:

ARTICLE 13 For the examination of each replacement of documentation, completing missing information, and clarifying or correcting the omissions resulting from the examination on the merits of the invention of a patent application, utility model or industrial design. 70.00

ARTICLE 14 For the services rendered by the Institute regarding trademarks, slogans and tradenames, the following fees are payable:

14a For reviewing an application, registration and issuance of the title certificate of a trademark.303.00

14c For reviewing an application of a slogan registration, as well as the issuance of the corresponding title certificate. 50.00

ARTICLE 15 For the services rendered by the Institute regarding appellations of origin, the following fees are payable.

15a For reviewing an application of the general protection declaration of an appellation of origin or of an application of modification of a general declaration. 205.00

15b Forthe authorization to use an appellation of origin or its renewal, per action taken. 90.00

15c For the recordation of a permission granted by the authorized user to use an appellation of origin.78.00

ARTICLE 16 For reviewing and prosecuting an application of administrative declaration of nullity, caducity, cancellation and administrative infringement,as well as the issuance of the technical opinion, per application. 129.00

ARTICLE 17 For a visit of inspection practiced byauthorized personnel under request of the interested party, to prove the compliance of the Industrial Property Law or facts related with the application thereof, for each establishment. 53.00

If inspection is practiced outside the Federal District, the traveling expenses shall be paid by the applicant.

ARTICLE 18 For any recordation in the General Registry of Powers of Attorney.19.00

ARTICLE 19 For consults regarding bibliographical data of documents related to patents, utility models, certificates of invention and industrial designs:

19b Of foreign or international documents available on common property. 68.00

ARTICLE 20 For consults on technical information in specific matters related to a product or determined process.

20b Of foreign or international documents available on common property. 134.00

ARTICLE 21 For information of searches regarding the state of art in specific technological areas, per search. 134.00

ARTICLE 22 For information on the validity of national patents, certificates of invention, utility model registrations and national industrial designs.14.00

ARTICLE 23 For services of selective and periodical information of patent documents published in the Gazette, for each specific technological area:

ARTICLE 24 For the information provided upon request in writing enquiring if a trademark or slogan has been registered, or if a tradename has been published, per item.14.00

24 BIS c) Search for a list of ten trademarks or less than ten in the name of a title holder. 6.00

ARTICLE 25 For the annual subscription of the Industrial Property Gazette, related to patents and trademarks, including air mail or local costs.

25 e For a leaflet of the current edition of any of the volumes provided by the Institute. In the case of foreign subscriptions the same will be quoted according to the mailing means chosen by the subscriber. 18.00

ARTICLE 26 For the annual subscription of a compact disc of bibliographical references of patents (CD-BANAPA) produced by the Institute. 179.00

26 BIS For the annual subscription of the compact disk collection ESPACE-MEXICO 2,249.00

a) Minimum payment (30 bibliographic queries) for the consultation service via Internet to the National Patent Database BANAPANET. This deposit shall be charged according to the number of queries.72.00

b) Charge against balance for each bibliographic query resulting from a search.2.00

ARTICLE 27 For the issuance of copies and verifying copies of documents, the following fees are payable:

27a For the issuance of certified copies of documents, for each letter or office-sized sheet. 1.00

27c For the issuance of simple copies, for each letter or office-sized sheet. 1.00

ARTICLE 28For reviewing and recognizing each priority right related to the industrial property rights. 115.00

ARTICLE 29 For reviewing each replacement of documentation, completing lack of information, clarifying or correcting omissions, as well as voluntary amendments ( not included in Article 13 of this Tariff), per action taken. 35.00

ARTICLE 31 For the compliance of a requirement requested by the by the Institute within the term of two additional months

ARTICLE 32 For the recordationof the transfer or encumbrance of a granted industrial property right, or that derived from a pending application, for the recordation or cancellation of the recordation of a license agreement or modification agreement; for the change of name, denomination or tradename of the applicant or owner of an industrial property right;for reviewing the recordation of a franchise application; for each one of the aforementioned acts, per patent, registration, publication or authorization.49.00

ARTICLE 34 For the change of address of the owner of an industrial property right; for the change of address of an industrial, commercial or service establishment; for accepting a new representative or Attorney, for each one of the stated acts. 14.00

i) This tariff will remain in force until the Mexican Institute of Industrial Property approves modifications of the same.

ii) The patent applications, utility models and industrial designs are not subject to annuity payments until the same are granted.

iii) When rendering services referred to in Articles 1 to 13 and 19 to 23 of this Tariff are requested by inventors, public or private advanced educational Institutes, public scientific or technological investigation Institutes, only 50% of the IMPI fees are payable.