On June 18, 2010, a decree was published in the Federal Official Gazette, reforming several provisions of the Mexican IP law related to patent practice. The main amendments are the following:
a) The industrial application requirement for patentability was modified to include a need to demonstrate the possibility of “practical utility” of the invention, and to fully support such utility in the written description.
b) In a period of six months after the publication of the patent application, information related to patentability of an invention can be filed before the Mexican Patent Office (IMPI) by any third party. If filed, the information may be considered at the Examiner’s discretion and it will not suspend the application process. The person filing the information will not be considered a party to the application, and will not have access to the patent file, nor immediate legal standing to challenge a granted patent, as was intended in the initial project of reform.
c) After a patent is granted, any third party can inform IMPI of causes of invalidity. The authority may consider such information discretionally to initiate an ex officio cancellation proceeding.
d) A provision is added defining the act of attempting an infringement action when a previous request for infringement has been denied, referring to the same patent. This provision is not very clear and it is likely to cause controversy in the future.
e) According to the Mexican IP Law, injunctions can be imposed during the course of a patent infringement action, and the title holder will have to post a bond in order to secure possible damages arising from those injunctions, if the infringement is denied. Likewise, the injunctions can be immediately lifted if the alleged infringer files a counterbond in favour of the plaintiff. A paragraph has been added to the corresponding article, indicating that the amount of the counterbond will have to be 40% higher than the amount of the bond.
It is noteworthy that the original project of reform was promoted by National Association of Drug Manufacturers (ANAFAM), the member companies of which participate mostly in the generic drugs market.
This initial project included, among other issues, two separate pre and post grant opposition proceedings, which would practically delay the granting and therefore the possibility for effective enforcement of patent rights. The project also intended to include additional causes of invalidity related the use of patent rights in activities in violation of the Federal Competition Law.
This project was reviewed (and modified) by the Senate, which determined that the majority of the amendments proposed were unnecessary, including the two issues mentioned above. The final project was ratified by the Chamber of Deputies, without further modification, and will come into force on September 20, 2010.