– Same as for “Patents of Invention“.
Membership in International Conventions
– Same as for “Patents of Invention“.
Note: during an undefined transitional period, both the Industrial Property Law (IPL) of June 27, 1991, as amended, and the Federal Law for the Protection of Industrial Property (FLPIP) of November 5, 2020 will apply to utility model 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 utility models filed on or after November 5, 2020.
Applicant: the applicant may be the inventor(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 local representative, preferably a patent attorney.
Protection of foreigners: the Mexican Constitution establishes equal protection for Mexican nationals and foreigners, in connection with utility models.
Concept of registrable inventions: objects, utensils, apparatus or tools may be registered as utility models if, as a result of a modification in their arrangements, configuration, structure of form, they offer a different function with respect to their component parts, or advantages of use.
Novelty grace period: the disclosure of an invention shall not affect its consideration as new, when, within twelve months prior to the date of filing the application (or priority date, if any), the inventor or his assignee has made the invention known directly or indirectly, or, where appropriate, when a third party obtained the disclosed information from the inventor or his assignee directly or indirectly, but if the invention 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 by the Office or the application was filed by an unauthorized party who obtained the information from the inventor directly or indirectly.
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.
PCT applications: time limit for entering national phase under both chapters I and II: 30 months.
Examination: after a formal examination, the application is published. The request of examination is deemed to be made when filing the application. 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 performed 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 submit pertinent explanations and file additional information.
Amendments of the claims: permitted before issuance of the notice of allowance if they are supported by the specification and/or drawings with the payment of a fee.
Divisions: generally permitted before paying of grant fees of the first application. 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 invention and the applicant's voluntary submission of a divisional application; and (2) in the case of lack of unity identified during examination, the FLPIP establishes that the Mexican Institute of Industrial Property will examine only the invention that is recited first in the claim set and will require the applicant to submit divisional applications for the remaining subject matter, if applicable. On the other hand, the new Law provides that voluntary 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 matter left out due to a division; a divisional application must claim matter 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 as its legal filing date 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 utility model 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 Letters Patent Deed.
Publication: once the utility model 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 claims. The description and the drawings will serve to interpret the claims.
Duration: fifteen years counted from the application date, the validity being subject to payment of annuities.
Annuities: the first five annuities must be paid together with the issuance fees; afterwards, annuities become due every five years.
Annuity grace period: within six months from the due date; after said period there is the possibility to re-install the utility model by paying a fine.
Working: the exploitation or working of the invention consists in the manufacture, selling or importation of the registered model in Mexico.
Reasons accepted for non-working: the Mexican Institute of Industrial Property accepts the filing of declarations stating that an invention has not been worked up to the date of the declaration or within the first three years that the utility model was in force. Such declarations are filed in accordance with the Paris Convention and the excuses that can be declared are the following: (a) that the owner is a citizen of one of the countries of the Union or resides or has his industrial or commercial establishment in one of these countries, and up to the date of the declaration, the first compulsory license has not been granted, as provided in Article 5, paragraph "A", subparagraph 3 of the Convention; (b) that recently a working license for the invention has been granted; (c) that up to the date of the declaration, it has been impossible to realize the industrial exploitation of the invention, due to one of the following reasons: (1) insufficient market; (2) unprofitable exploitation; (3) lack of raw materials; (4) insufficient financing; (5) any other similar reason with logical and suitable basis. The attorney of the patent owner can prepare the corresponding declaration. Excuses for non-use are not mandatory.
Compulsory licenses: after three years counted from the date the registration was granted or four years counted from the filing date, whichever occurs later, anyone may request the grant of a compulsory license, unless there are technical or economic reasons for non-working.
Marking of registered products: the owner can mention the registration number on the products he manufactures, and that the product is manufactured in accordance with the registered invention. In order to exert civil or criminal actions derived from the infringement of intellectual property rights as well as to enforce preliminary measures, the right holder shall make of public knowledge that the relevant products are protected by intellectual property rights. One suitable way to make such public knowledge available is marking. Marking should be applied to the products or the packaging of the protected products. Marked products within this context can be the products directly protected.
Assignment: it is possible to assign granted utility models.
Licensing of application or registrations is permitted and their recording is optional.
Restoration: once a utility model expires considering the grace period and the period for re-installment, it cannot be revived.
Modification of Protection after Registration
Rights of prior user: the previous user of an invention within the Mexican Republic is entitled to continue working his invention, provided he has proved the prior use thereof.
Opposition: Mexican Law does not provide the right to oppose granted utility models; however, these can be invalidated through an administrative procedure whenever all pertinent proofs are offered.
Expropriation: utility models can be the subject of public utility licenses (this has not happened so far); however, the owner of the registration shall be heard during the process and must be compensated economically by the government.
Invalidation: a utility model can be partially or totally invalidated upon request of any interested party through an invalidation action and the decision can be appealed.
Reasons for invalidation: (a) the protected matter could not be subject of protection, or for matter lacking novelty or industrial applicability; (b) when the utility model registration does not disclose the invention in a sufficient, clear and complete manner to be carried out by a skilled person; (c) the claims go beyond the disclosure of the specification as initially filed; (d) in the case of a utility model corresponding to a divisional application, when said application did not comply with the applicable requirements; (e) when as result of a post-grant amendment, the scope of the invention was broadened; (f) when a priority right was unduly recognized and this resulted in an erroneous examination of novelty; (g) in the case of double protection; (h) when the utility model was granted to someone who did not have the right to obtain it.
Infringement: a utility model is being infringed when the protected invention is practiced by a third party without the authorization or corresponding license from the owner. Importation of the product without authorization infringes the relevant registration.
Penalties: Mexican Law establishes that administrative infringements to the Law and other related provisions shall be punished as follows: (1) a fine of up to the amount of 250,000 days of the general minimum wage payable in Mexico City; (2) an additional fine of up to the amount of 1,000 days of the general minimum wage payable in Mexico City for each day that the infringement persists; (3) temporary closure for up to ninety days; (4) permanent closure. In the event of a second or subsequent offense the fines previously imposed shall be doubled, but the amount thereof shall not exceed three times the applicable maximum set. The owner is also entitled to claim damages before either the Mexican Institute of Industrial Property after infringement has been previously declared by said Institute, or directly before a Civil Court without the need of the infringement declaration.
Enforcement: administrative proceedings before the Mexican Institute of Industrial Property. The plaintiff at the time of submitting the complaint must accompany all the evidence that supports its actions. Evidence will not be accepted afterwards unless dated after the complaint. Therefore, usually the only stages that occur after the answer to the complaint has been filed are the filing of the testimony of expert witnesses (in writing), or inspections visits, if any. Provisional measures are available in Mexico that include from the seizure of merchandise or materials to produce infringing products, to the issuance of restrictive orders; they are in force until a decision is rendered by the Mexican Institute of Industrial Property. The requisites are a bond to guarantee the defendant against the possible damages caused by the application of the provisional measures, prove the fact that the product is protected by a registration has been made public, and provide the information necessary to identify the goods or physical facilities in which the infringement takes place, including digital platforms. After executing the measures, the defendant has the right to lift the same by submitting a counter bond.