On June 18, 2010, a decree was published in the Federal Official Gazette, reforming several provisions of the Mexican Patent Law related to patent practice, which will come into force on September 20, 2010. The main amendments are the following:
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. This requirement is added to the enablement requirement already provided in the Law. Practical utility is now defined as the feasibility of an invention to be applied (made, used) for the ends addressed in the written description.
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 examination process. The person filing the information will not be considered a party in the prosecution of the patent 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. In any case, this new rule provides the opportunity for any third party to submit prior art and arguments. Arguably, the grounds for such submissions could be limited to whether the subject matter is patentable or not at the light of the prohibitions provided in the Law, however, this new rule will likely be used to contest the novelty, inventive step and “practical utility” upon the new definition of a patent application.
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 invalidation proceeding. Whether IMPI is obliged to start the invalidity action or not and whether the identity and grounds denounced by the third party will be revealed to the patent owner is not clear in the amendments to the Law.
A provision is added indicating that the act of filing an infringement action by the patent holder against any party, when a previous request for infringement has been denied, referring to the same patent, is considered an infringement by the patent holder. This provision is not very clear and its interpretation is likely to cause controversy in the future.
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 favor 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. This last amendment in comment also impacts the preliminary injunctions in trademark, slogans, tradenames and design cases.
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.