Patent Priority Rights – Federal Law for the Protection of Industrial Property

Sep – 21 – 2020

The Federal Law for the Protection of Industrial Property (new IP Law), which will enter in force in November 5, 2020 foresees new legal standards regulating the priority rights in Mexico. The most relevant changes regarding priority rights are:

  • Even though the new IP Law provides as a requirement for the recognition of priority rights the filing of a certified copy of the priority application, it also provides that the Head of the Patent Department will issue a Decree indicating the circumstances under which it will not be required to file a certified copy.

Until the above mentioned Decree is issued, the certified copy of the priority applications must be filed with the Mexican Patent Office (MPO) within a period of 3 months as of the filing date; otherwise, the MPO will refuse the recognition of the priority rights.

  • A new cause of invalidation is included, according to which the patent will be declared invalid if the priority right was mistakenly recognized by the MPO and such mistake was relevant for the examination of the novelty and inventive step of the patent subject matter.

Consistent with the Paris Convention the period of priority remains of 12 months for patents and utility models and 6 months for industrial designs.