Mexico - New “Federal Law for Protection of Industrial Property”

A new “Federal Law for Protection of Industrial Property” came into force in Mexico on 5th November 2020.

Vis-à-vis patents, the new law:

• Provides new, broader rules regarding the one-year grace period for prior art disclosures in relation to patent applications;

• Prohibits double patenting;

• Expressly provides that the patentability of substances, compounds or compositions contained in the state of the art cannot be excluded from patentability as along as a new use thereof is claimed;

• Provides for voluntary divisional patent applications to be filed up to the issuance of the decision rejecting, abandoning, or withdrawing the application. If the parent application is allowed, voluntary divisional applications can still be filed before paying the grant fees. Multiple voluntary divisional applications can be filed, provided that they are filed at the same time.

The Implementing Regulations pertaining to the new IP Law are still pending, and so a full interpretation of the Law’s limitations and criteria will need to be clarified in due course.

According to the transitional articles of the new Law, the prosecution of patent applications which were pending when the new law entered into force will continue pursuant to the former IP Law.

It is also pertinent to note that the Mexican Patent and Trade Mark Office has recently launched an online service to allow the electronic prosecution of patent, utility model, and design applications. This online service has proven to be an effective option to avoid delaying prosecution during periods of physical closure of the Patent and Trademark Office due to COVID-19 or any other unexpected issue or force majeure causing such closure.