Legal Update: Amended Regulations to Industrial Property Law Regarding Recordation of Licenses and Changes in Ownership

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On December 16, 2016, the Regulations to Mexico’s Intellectual Property Law were amended.

The key amendments include:

  • The recordation of licenses, assignments, mergers, securities, changes of name or address and new legal representatives in several patents/patent applications and/or trademarks may be filed in one single petition or brief as long as the parties are the same.
  • License Agreements and Assignment Agreements must be signed by both parties (Assignor and Assignee / Licensor and Licensee). The filing of agreements signed only by the titleholder will no longer be accepted.
  • The petition of recordation of a license shall only mention the name, nationality and address of Licensor and Licensee; the term of the agreement, whether Licensee may take any legal actions to protect the patent, and listing of the goods or services to be licensed (in the case of trademarks) are no longer required to be indicated.
  • One original or certified and legalized copy of the document reflecting any update in ownership will suffice; in other words, it is no longer necessary to pay government fees for the issuance of a certified copy of the original or of the certified document filed.
  • The term to reply to any official action issued by the Mexican Institute of Industrial Property (IMPI) remains two months as of the next working day of its notification. However, it is important to note that, from now on, IMPI will only issue one official action requiring applicant to submit any missing documents and/or information. Thus, in the case that the requirements are not fully complied with when replying to such communication, IMPI will dismiss the petition of recordation.
  • The Power of Attorney shall include the name and signature of two witnesses and it is no longer required to include their addresses.

These amendments are already in force in Mexico.

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INTELLECTUAL PROPERTY, CORPORATE & COMMERCIAL LAW

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This newsletter is intended only as a general discussion of the addressed issues, and should not be regarded as legal advice.

For further information on the content of this newsletter, please contact

Sergio L. Olivares, Jr. sergio.olivares@olivares.mx;  Alejandro Luna alejandro.luna@olivares.mx;

Luz Elena Elías luz.elias@olivares.mx

or call +52(55) 5322 3000