MEXICO Law and Practice Contributed by: Luis Álvarez Cervantes, Adolfo Athié Cervantes, Alejandro Barrera, Jesús Colunga, Eduardo Kleinberg, Juan José López de Silanes, Carlos Martínez-Betanzos and Amílcar Peredo, Basham, Ringe y Correa S.C.
7. Intellectual Property 7.1 Patents
specification, claims and drawings, in Spanish. The application must be published in the Mexican Indus - trial Property Gazette as soon as possible following the expiry of a period of 18 months from the national filing date for Convention applications, provided that all formalities are deemed complete. After the publi - cation has taken place and a two-month period for third-party observations has passed, the application is studied as soon as possible by a technical examiner at IMPI and, if deemed necessary, an official action is issued, requesting clarification or changes to the application. This may be done up to four times. Timeline for Grant Procedure The grant procedure currently takes three to five years from the filing date. A patent grants a right of exclusive use over an inven - tion for 20 years counted from the filing of the patent application. For PCT applications, the effective filing date in Mexico is the date of filing of the international When, during the prosecution of a patent application, there was an unreasonable delay attributable to IMPI, a supplementary certificate can be sought for IMPI to adjust the term of the patent. According to the former North American Free Trade Agreement (NAFTA), now replaced by the United States-Mexico-Canada Agreement (USMCA), the owner of a patent could seek compensation for lost patent term time if IMPI took more than three years to grant the patent. The NAFTA treaty is enforced on all patent applications filed before 1 July 2020. In this regard, the authors’ firm has successfully obtained a favourable decision in which, according to NAFTA, the lost enforceable time of a patent filed before 1 July 2020 was compensated with three additional years. This new precedent has already been published in the Official Gazette dated 8 January 2021 as a rel - evant case entitled: “Patents. When there are delays attributable to the administrative authority in a patent’s approval, its validity may not be less than 17 years counted from the date of its granting.” The precedent was issued by the Supreme Court of Justice in the patent application. Term Extensions
In Mexico, inventions are defined as any human crea - tion that allows the transformation of the matter or energy in nature for their use by humanity and the sat - isfaction of specific needs. New inventions resulting from an inventive activity and susceptible to industrial exploitation may be subject to a patent. Patents protect technical solutions to a problem and confer on their holders the exclusive right to exploit the invention and to prevent others, without authori - sation, from making, using, selling, offering for sale, or importing the patented product, as well as from using the patented process or importing into Mexico products directly obtained from such process. Certain subject matter is excluded from patentability, such as discoveries, scientific theories, mathematical meth - ods, surgical or therapeutic methods, and inventions contrary to public order or morality. A patent is an exclusive right granted by the state to an inventor over their invention, granting them the right to prevent third parties from manufacturing, using or selling the invention without their consent. Grant Procedure A right arises with a granted patent/registration through the filing of a patent application before the Mexican Institute of Industrial Property ( Instituto Mexicano de la Propiedad Industrial , or IMPI). The application must contain all relevant information regarding the inventor and, if the right has been assigned, the relevant infor - mation of the assignee. It must also contain formal documents such as the assignment and the power of attorney document. In addition, it is possible to claim priority from a previous application filed in a different country that is a member of the Paris Convention for the Protection of Industrial Property, The application may also be filed as a National Phase of a Patent Co-Operation Treaty (PCT) Patent Appli - cation, in terms of which Mexico is a 30-month term country. The application is studied by a formal exam - iner at IMPI, who will determine if there are any formal documents missing and if all documents are in good order. The application must contain the invention’s
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