Mexico has a new Federal Law for the Protection of Industrial Property and has amended the Federal Copyrights Law
Mexico Intellectual Property Alert
On July 1st, 2020, a new Federal Law for the Protection of Industrial Property ('Ley Federal de Protección a la Propiedad Industrial') (the New IP Law) was published in the Official Gazette of the Federation, repealing the former Industrial Property Law of the year 1991. Additionally, on that same date, the Federal Copyrights Law ('Ley Federal del Derecho de Autor' in Spanish, the Copyrights Law) was also amended in some material aspects. The enactment of the New IP Law and the amendment to the Copyrights Law were approved to harmonize and adapt the Mexican legal intellectual property framework to the obligations undertaken by Mexico under the United States-Mexico-Canada Agreement (USMCA) which came into effect on such date.
The New IP Law will come into effect on November 5th, 2020. It includes several modifications to the current IP legal framework, standing out - among others- the following:
(i) a third party may now use the information of a patent before its expiration, with the purpose of carrying out studies, tests and experimental production to obtain a sanitary registry of medicines for human health;
(ii) the protection period for utility models was increased to 15 years (the former law established 10 years);
(iii) double patenting of the same invention is now prohibited;
(iv) the concept of “industrial secret” was limited,
(v) a new felony consisting in the appropriation, acquisition, use or disclosure of an industrial secret through any means with the purpose of causing damage or obtaining an economic benefit, was added;
(vi) artisan products were incorporated within industrial designs;
(vii) the obligation to register export licenses to be effective before third parties was eliminated; and
(viii) the term of protection for trademark registrations will now be counted from the date of their granting, unlike before, which was from the date of filing of the application.
A relevant matter is that the New IP Law strengthens the authorities and powers of the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial in Spanish, the IMPI) to enforce said law. Now the IMPI may determine the amount of the fines it imposes, may require its payment, collect the resulting tax credit and demand its payment through an administrative execution procedure. In addition, the amounts of the fines have been increased to up to the equivalent of around USD 970,000.
Regarding the amendment to the Copyrights Law, the new provisions of said law came into effect on July 2nd, 2020. The various amendments to the law include the addition of a whole new chapter dedicated to technological protection measures, information on rights management and internet service providers. Some topics of interest in this chapter are that the Copyrights Law now defines who will be considered as an Internet service provider and as an online service provider, assigning certain responsibilities to each of them, and it also expands the obligations of Internet service providers to harmonize them with the Digital Millennium Copyright Act (DMCA) of the United States. In relation to the latter, the “notice and take down” process was included, requiring internet service providers to remove or disable content that infringes copyright as long as these contents are in their systems or networks at the time of receiving a notice from the owner of the copyright or connected right or by an authorized person.
Additionally, the reform to the Copyrights Law includes the expansion of the events of protection for patrimonial rights on software by including the power to authorize or prohibit:
(i) any form of distribution of the software or a copy of it, including rental;
(ii) de-compilation, reverse engineering and disassembly of software, and
(iii) unauthorized sharing of the software, including making it publicly available. Likewise, sanctions were added to those who (i) hack an effective technological protection measure that controls access to a work; (ii) suppress or alter the information regarding rights management; (iii) share information on rights management knowing that this information has been suppressed or modified without authorization; (iv) produce, publish, edit or make copies of works, performances or phonograms available to the public, knowing that the information on rights management has been suppressed or modified without authorization.