MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
7.4 Enforcement Against AI-Enabled Infringement
petitive advantage, and that reasonable measures were taken to preserve its secrecy (such as NDAs, access restrictions, and security controls). In addition, it may be difficult in practice to prove access to or misuse of specific confidential information. Accordingly, patents may be preferred when the invention can meet patentability requirements and dis- closure is acceptable in exchange for stronger exclu- sionary rights. Trade secrets may be preferable when the subject matter is difficult to reverse engineer, not easily patentable, or when long-term confidentiality provides greater commercial value. 8.2 Cumulative and Overlapping Protection Cumulative protection of the same subject matter under multiple intellectual property regimes is permit- ted in Mexico and is relatively common across pat- ents, industrial designs, copyrights, trade marks, and trade dress, provided that each right protects a differ- ent legally relevant aspect of the same subject matter. In principle, there are no absolute statutory prohi- bitions on overlapping protection, as long as the requirements of each regime are independently sat- isfied and the protections are compatible. However, each IP right has a distinct scope. Patents protect technical inventions, provided they are new, involve an inventive step, and have industrial application, while granting exclusivity over the functional solution itself. Industrial designs protect the aesthetic appearance of products, excluding features dictated exclusively by technical or functional considerations. Trade mark and trade dress protection requires that the sign or appearance function as an indicator of commercial origin and excludes purely functional features or those necessary to achieve a technical result. Copyright pro- tection is limited to original expressive elements and does not extend to utilitarian or functional aspects. Conflicts arising from overlapping rights are generally resolved on the basis of priority and the existence of prior rights. For example, a trade mark registration incorporating a character, design, or other element may be challenged or declared invalid if a prior copy- right holder demonstrates earlier creation or use of the work. Similarly, earlier patent or design rights may prevail over later trade mark claims if the latter attempt
The Federal Copyright Law exempts providers of online services, defined as parties that store mate- rials online for users or that link users to contents through hyperlinks or similar mechanisms, from liabil- ity from the actions of their users if they fulfil certain requirements. Accordingly, a provider of an online AI tool could be exempt from liability for what users of the tool do with it in certain cases. The most impor- tant requirements are that there must be a policy to suspend access to repeat copyright infringers and a notice-and-takedown mechanism to eliminate infring- ing contents quickly upon notice by the respective rights-holder. In addition, please note the FLPIP has been recently amended to expressly provide that infringements carried out with the use of AI tools are punishable in the same manner as any other form of infringement. A user of AI tools who infringes intellectual property rights is subject to the same liability as someone who infringes without such tools. 8. Intersections and Overlaps 8.1 Choice of Protection and Strategic Considerations Patent protection provides time-limited exclusiv- ity of up to 20 years from the filing date and grants rights over the invention itself, meaning that the pat- ent holder can enforce exclusivity even if a third party independently develops the same invention without knowledge of the patent. Trade secret protection, by contrast, may last indefi- nitely as long as the information remains confidential and continues to provide a competitive advantage. It does not require disclosure, but it does not protect against independent development or reverse engi- neering carried out without improper means. Enforcement considerations are often decisive. Patent protection is generally more straightforward to enforce because it is based on the granted claims, whereas trade secret protection requires demonstrating that the information is confidential, that it provides a com-
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