On March 13, 2018, the Official Journal of the Federation published several amendments to the Industrial Property Statute. The amendments refer to substantive and procedural issues in the fields of patents, industrial designs, utility models and geographical indications.

The most important changes were the introduction of a special statutory protection for geographical indications and amendments to the provisions regarding industrial designs, including the term of protection.

The amendments to the Statute will become effective on April 27, 2018.

In this first part, I will comment on the amendments affecting the protection of industrial designs.

Industrial Designs

1. The term of protection of industrial designs was amended.

The old term was fifteen years counted from the filing date in Mexico. The new term will be five years from the filing date, renewable for five terms for a maximum term of twenty five years. The window to renew will start six months before the expiration date of the design registration, with a grace term of six months.

2. Design applications still pending on the date the amendments become effective will be examined according to the old provisions, unless the applicants file a written petition within a thirty business-day term, asking the Mexican Patent and Trademark Office (MPTO) to examine applications and grant issue registrations under the amended provisions. The deadline to ask the MPTO to examine applications under the new provisions will be June 11, 2018.

3. Existing design registrations will maintain their original fifteen years term, subject to the payment of the usual maintenance annuities, but they may be renewed for up to two five-year terms. The renewal application must be filed within six months before the date of expiration or within the following six-month grace term.

4. The amended statute intends to provide more accuracy to define novelty regarding industrial designs.

The Industrial Property Statute states that industrial designs may be registered if they are new and may be used in industry; that did not change. The statutory provision also states that a design is deemed to be new of they are of “independent creation and differ in a significant manner of known designs or combinations of characteristics of known designs”; that did not change either.

 The new thing is that, now, the amended statute explains that a design is of independent creation “if no other identical industrial design was publicly disclosed before the filing date of the application or the acknowledged priority”. Designs that only differ in “irrelevant” details will be considered identical. It will be up to the MPTO (and eventually the courts) to decide when a detail is irrelevant.

Further, the amended provisions stipulate that in order to decide whether a design actually differs in a significant manner from earlier disclosed designs, it will be necessary to consider the general impression that the design would cause on an expert on the subject matter and to the general impression caused by any other industrial design publicly disclosed before the filing date of the design application or the acknowledged priority, taking always in account the degree of freedom for the designer to create the industrial design.

The lawmakers that proposed the bill* explicitly explained that the purpose of the above amendment was to make novelty examination and prosecution of industrial design applications easier. However, I have doubts that they accomplished their aim. The demand of considering the impression that the design would cause on an expert, not just a person skilled in the art, seems out of proportion. Further, the amended statutory provision refers to an expert on the subject matter; what subject matter? I wonder if the examiners will need to have a PhD in Aesthetics to be deemed as an expert in the subject matter.

5. The Mexican statute allowed industrial designs to be registered in reference to a genericity of products. Now, the amended statute requires the applicant to identify the specific product on which the industrial design would be used.

6. The original bill proposed that industrial design registrations might also protect the design of handcrafts.

However the enacted amendments make no reference to handcrafts. It is not clear to me what happened at Congress and why the lawmakers decided to remove the explicit reference to handcrafts.

7. Before the changes in the Statute, design applications were not published; now they will be published as soon as the formal examination is completed.

8. Last but not least, one consequence of the amendments to the Industrial Property Statute is that official records of published patent, utility models and industrial design applications will become of public record just after the publication. Before the amendment, access to the official records of published patent, utility models and industrial design applications were very limited, even after the publication of the application. This change in the law is consistent with one of the main explicit purposes of the Industrial Property Statue, namely, encourage dissemination of information and technological knowledge. Further, allowing third parties to have full access to all the information stated in the patent/design/utility model application might give third parties a timely warning to avoid infringing the potential rights of the applicant.

* I thank my colleague Alejandro Luna Fandiño, Chair of the Legislation Committee of the Mexican Chapter of AIPPI, for kindly providing the project of the amendments to the Industrial Property Statute.

Diario oficial 13-mar-18 (diseños)