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New criteria regarding letters of consent

BY GABRIELA GONZALEZ For many years, the Mexican Trade Mark Office (MTO) has been accepting letters of consent from the owners of prior trade mark registrations in order to overcome a reference cited as anticipation in the prosecution of a trade mark application that can be considered as similar or even identical. Most exclusive rights over [...]
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Deciphering Mexican patent prosecution

BY OSVALDO AMARAL MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, OCTOBER 2007 When it comes to prosecuting a patent application before the Mexican Patent Office, the applicant should remember that the Office does not undertake a completely independent substantive examination of patent applications. Mexico’s Law of Industrial Property contemplates that the Office may accept or require the findings […]

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Back to the good old days

BY ABRAHAM DÍAZ ARCEO MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, JULY/AUGUST 2007 Before the amendments to the Federal Law of Administrative Proceeding (FLAP), rulings issued by the Mexican Patent and Trade Mark Office (IMPI) were challenged through Amparo suits before the Federal District Court (FDC). Decisions rendered by the FDC were further contested at the Federal Circuit [...]
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Trade dress protection enhanced

BY GABRIELA GONZALEZ On January 25, 2006, the Mexican Law of Industrial Property (LIP) was amended concerning the legal framework of franchises in Mexico to incorporate a new infringing cause based on the unauthorized use by a third party of the image of a product, best known as trade dress (Article 213 XXVI LIP). Before this [...]
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Preliminary injunctions in unfair competition action

BY DANIEL SANCHEZ MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, DECEMBER 2006/JANUARY 2007 Article 229 of Mexico’s Industrial Property Law says: To take civil or criminal actions as a consequence of the infringements of an industrial property right, as well as to adopt the measures set forth in article 199 bis of this law, it shall be necessary [...]
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Proving patent infringement

BY ALEJANDRO LUNA, PARTNER  MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, JULY/AUGUST 2002 The Mexican Industrial Property Law (IPL) grants a patentee the right for the exclusive exploitation of the patented invention. Therefore, the patent gives the right to exclude others from making, using, offering for sale or importing the covered invention. Briefly, in a patent infringement action [...]
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New Regulations for pharma industry

BY JUAN LUIS SERRANO MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, FEBRUARY 2008 On January 2, 2008 a Decree was published in the Official Gazette in Mexico modifying several provisions of the Regulations for Health Consumables of the Health Law, concerning important issues for the pharmaceutical industry. <br< The first relevant amendment is that these regulations eliminate the […]

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New IP law includes ineffective amendment

BY ABRAHAM DÍAZ MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, APRIL 2006 On January 25, 2006, the Mexican Law of Industrial Property (LIP) was amended. Among other changes, these included a new infringement cause which provides as follows: Art. 213: The following constitute administrative infringements: … XXVI. To use combination of distinctive signs, operative and image elements, that [...]
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Income expectations in licensing

POR CARLOS WOODWORTH MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, JUNE 2006 Technology transfer provides the scope for creativity in the organization and structure of what is usually a long-term relationship. The bottom line is always lasting profitability for the respective parties. When setting a price for a technology transfer the initial objective should be to quantify the [...]
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Renewing associated trade marks

BY MAURICIO NARVÁEZ A trade mark registration in Mexico is in full force for a term of 10 years from the filing date. After that time it is necessary to request renewal before the Mexican Institute of Industrial Property (IMPI). According to the Law of Industrial Property (LPI), to proceed with this action the corresponding trade [...]
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