Katzarov’´s Manual on Industrial Property

Designs and Models

– Industrial Property Law of June 27, 1991.
– Amendments of August 2, 1994, October 25, 1996, December 26, 1997, May 17, 1999, January 26, 2004, June 16, 2005, January 25, 2006, May 6, 2009, January 6, 2010, June 18, 2010, June 28, 2010, January 27, 2012, April 9, 2012, June 1, 2016, April 27, 2018, and August 10, 2018.
– Regulation on the Industrial Property Law published on November 23, 1994.
– Amendments of September 10, 2002, September 19, 2003, January 6, 2010, June 18, 2010, June 10, 2011, and December 12, 2016.
– Federal Law for the Protection of Industrial Property, in force since November 5, 2020.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 14, 1975.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 14, 1995.
– Locarno Agreement Establishing an International Classification for Industrial Designs, since January 26, 2001.
– Hague Agreement Concerning the International Registration of Industrial Designs, Geneva Act, since June 6, 2020.

Filing

Note: during an undefined transitional period, both the Industrial Property Law (IPL) of June 27, 1991, as amended, and the new Federal Law for the Protection of Industrial Property (FLPIP) of November 5, 2020, will apply to design applications and registrations (to some extent) depending on their date of filing. The summary provided below corresponds to the provisions of the FLPIP, applicable to designs filed on or after November 5, 2020.

Definition: new industrial designs capable of industrial application may be registered. New is understood to be a design that is of independent creation, significantly differing from already known designs or combinations of characteristics from already known designs. Industrial designs include industrial drawings, which consist of a combination of figures, lines or colors incorporated in an industrial or artisanal product for ornamentation purposes and which give it a specific appearance; or industrial models, which consist of three-dimensional forms that serve as a standard for manufacturing an industrial or artisanal product.

Applicant: the applicant may be the designer(s) and/or their assignee(s). If the application is filed by the assignees, the corresponding assignment should be filed. 

Foreigners: may file applications appointing a duly empowered local representative, preferably a patent attorney. 

Protection of foreigners: the Mexican Constitution establishes equal protection for Mexican nationals and for foreigners, this is also valid in connection with designs. 

Novelty: international. 

Novelty grace period: the disclosure of a design shall not affect its novelty, when within twelve months prior to the date of filing the application (or priority date, if any), the designer or his assignee has made the design known directly or indirectly, or, where appropriate, when a third party obtained the disclosed information from the designer or his assignee directly or indirectly, but if the design has been published by a domestic or foreign Patent Office, it shall no longer be considered as new, unless the publication was made by error made by the Office or the application was filed by an unauthorized party who obtained the information from the designer.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, signed by the applicant and two witnesses, with their names and full addresses typed under their signatures; no certification nor Apostille necessary;
2. Specification in Spanish;
3. Formal drawings;
4. The certified copy of the priority document must be filed along with a Spanish translation thereof;
5. If the applicant is an assignee, an assignment agreement must be filed; this document must be signed by the inventor and by two witnesses with their names and full addresses typed under their signatures. Notarization and legalization are required when the document is executed abroad and a copy is used instead of the original document.

Term for filing missing documents: for the certified copy of the priority document, three months after filing. For all other documents, two months from the official request (extendible for two additional months at a cost). 

Electronic filing: available since April 2016. 

Complete electronic prosecution: available since April 2017. 

Electronic signatures: are accepted for filing applications, writs, payments and responses to official actions, however, for power of attorney or assignment documents wet signatures are recommended as no specific provisions exist for the acceptance of electronically signed documents of this type. Scanned copies of documents are accepted when using the electronic filing system. The Mexican Institute of Industrial Property is entitled to request the original document at a later date. For paper filings, scanned copies cannot replace the originals.

For a change of name:
1. A document attesting to the change of name, in original or a notarized and legalized copy (a scanned copy is accepted for recordal filed online);
2. Power of attorney in the new name, simply signed (a scanned copy is accepted for recordal filed online).

For a change of address: no document is required.

Examination and Granting

Examination: after a formal examination, the application is published. It is unnecessary to file a request for examination as substantive examination is performed automatically in all applications wherein formalities are accredited. Upon carrying out the substantive examination the Mexican Institute of Industrial Property may request the aid of specialized national bodies and institutions and may accept or require the examination done by foreign examining offices. If during the examination, it is found that the application lacks novelty or industrial applicability, the applicant is required in writing to give pertinent explanations and file additional information.

Amendments: permitted before issuance of the notice of allowance if they are supported by the specification and/or drawings with payment of a fee. 

Divisions: generally permitted before paying of grant fees of the first application or before the issuance of a final negative resolution (i.e. final rejection, withdrawal, or abandonment notice). The FLPIP contemplates two veins for filing a divisional application, namely (1) the division of an application required during examination due to lack of unity of design; and (2) the applicant's voluntary submission of a divisional application. In the case of lack of unity identified during examination, the FLPIP establishes that the Mexican Institute of Industrial Property will examine only the design that is recited first and will require the applicant to submit divisional applications for the remaining designs, if applicable; on the other hand, the FLPIP provides that voluntary filing of divisional applications will be acceptable only when the parent case is pending; moreover, a divisional application cannot be subsequently divided but only at the Institute's request, independently of the status of the first parent application; importantly, it is not possible to reinsert in the parent case or in a divisional application a design left out due to a division; a divisional application must claim a design different from that of the parent case and in any other divisional application, if any; not complying with these provisions may cause a divisional application to lose its legal filing date (i.e. that of the original parent application).

Reconsideration: against the denial by the Mexican Institute of Industrial Property to grant a registration, administrative reconsideration may be requested before the Mexican Institute of Industrial Property itself, within fifteen days counted from the date of the denial; should this decision be confirmed, an appeal can be lodged before the Special Branch for Intellectual Property Issues of the Federal Tribunal for Administrative Justice thirty days after the resolution of the administrative reconsideration is handed down; alternatively, this second option can be used directly without the need to go first to the reconsideration procedure.  

Granting: when the grant of a design proceeds, the applicant is informed in writing. A term of two months (extendible for two additional months) is allowed to pay the fees corresponding to publication and issuance of the Registration Title. The Registration Title is issued in electronic format only.

Publication: once the design has been granted it is published by the Mexican Institute of Industrial Property in the Official Gazette. 

The rights conferred by the registration will be determined by the approved description and figures.

Duration of protection: as of April 27, 2018, five years counted from the filing date of the application. 

Renewal: for periods of five years, up to twenty-five years. Petition for renewal should be filed within a term of six months before the due date, or within a grace period of six months after.