Mexico: newly implemented Industrial Property Law sparks controversy around the criteria and scope of provisions

Mexico: newly implemented Industrial Property Law sparks controversy around the criteria and scope of provisions

This is an Insight article, written by a selected contributor as part of IAM's co-published content. Read more on Insight

This article explains some of the most relevant current controversies in patent practice triggered by the entry into force of the new IP Law, specifically, those related to patent term adjustment and divisional applications.

On 5 November 2020, as a result of the entry into force of the USMCA, the new Federal Law for Protection of the Industrial Property (the new IP Law), entered into force. The new IP Law represents an important legislative change, as it aims to align domestic law with the standards set by the new trade and cooperation agreements signed by Mexico in recent years.

However, some of its provisions combined with the authorities’ criteria have generated controversy and continue to be the subject of discussion due to the solutions or interpretations that are being given in practice, a situation that has even led to the filing of legal actions to try to define the criteria and scope of said provisions for their proper implementation in benefit of patent applicants and holders in Mexico.

Article 53 of the Federal Law for the Protection of Industrial Property, in force as of 5 November 2020, establishes that patents in Mexico have a non-extendable validity of 20 years counted from the filing date of the application. This determination is consistent with the provisions of article 23 of the now abrogated Industrial Property Law, which is still applicable to patents filed and prosecuted before 5 November 2020.