Initiative to reform the Federal Law for the Protection of Industrial Property

Galicia - On September 15, President Claudia Sheinbaum Pardo sent the Senate the Initiative with Draft Decree amending, adding to, and repealing various provisions of the Federal Law for the Protection of Industrial Property (the "LFPPI" or the "Law") (the "Initiative"). The Initiative proposes, among others, the following reforms:

1. The fictitious affirmative is established in relation to new maximum response periods for procedures, among which the following are added: (i) 4 years for patents and utility models; (ii) 2 years for industrial designs; (iii) 2 months for integrated circuit layout designs; (iv) 5 months for trademark applications, notices, and trade names; (v) 2 months for procedures associated with the preservation of rights in distinctive signs; and (vi) 5 months for applications for declarations of protection for appellations of origin or geographical indications, and 2 months for renewals of authorizations for their use. In the area of ​​patents, the provisional patent application is incorporated to provide preliminary protection to inventors while the invention is being perfected, with a 12-month grace period for filing the definitive application. Once the formal examination is passed, early publication of the application may be requested, thereby accelerating the start of the substantive review. Furthermore, the possibility of avoiding the abandonment of applications is provided by reestablishing application procedures within 15 days of a missed deadline.

2. In the case of drug patents, the possibility of adjusting the patent validity period in cases of unreasonable delay in the granting of health registrations by the Federal Commission for the Protection against Health Risks (COFEPRIS) is regulated; such adjustment may not exceed five years from the day following the expiration of the patent validity.

3. In the area of ​​trademarks, position, motion, and multimedia trademarks are recognized as subject to registration, significantly modernizing the available protection options. The suspension of examination of applications for identical or confusingly similar trademarks filed after this date is incorporated, when there are registrations or publications subject to nullity, expiration, cancellation, or their respective challenges.

4. Regarding designations of origin or geographical indications, the Initiative reduces the various time periods within the opposition process for applications for a declaration of protection (for filing the opposition and for making representations) to one month.

5. The possibility of claiming ownership of a patent, utility model, or industrial design when it has been improperly granted is incorporated, provided that the right is valid (including the right of the claimant to make the corresponding annual payments), as well as the possibility of restoring a priority right when the date of receipt falls after the corresponding legal deadlines for priority recognition (12 months for patents and 6 months for industrial designs).

6. The Initiative proposes a restriction on the registration of transfers of patents or registrations of industrial designs or utility models when requested in proceedings involving registered liens that have not been cancelled. Similarly, with respect to trademarks, the holders are required to register changes in name or corporate name, or changes in legal status, so that they can be effective against third parties.

7. Industrial or commercial activities or acts that mislead, mislead, or deceive the consumer by unfoundedly leading them to believe that there is an official sponsorship relationship between a brand and a public or private event of mass gatherings (ambush marketing) are added as an infraction.

8. The Initiative considers that the cases of administrative infractions will be updated when the sanctioned conduct is carried out using artificial intelligence.

9. With respect to the cultural heritage and traditional expressions of indigenous and Afro-Mexican peoples, the catalogue of prohibitions on trademark registration is expanded, explicitly including that no sign that is identical or confusingly similar to the following will be registrable: (i) elements that are part of the cultural heritage or are clearly linked to the development of the cultural heritage, knowledge GA - #1142128.v1 3 and traditional expressions, as well as (ii) manifestations associated with them or with the collective intellectual property of indigenous and Afro-Mexican peoples and communities, unless the application is submitted by members of said communities or has prior authorization from the respective community general assembly.

10. The Initiative also seeks to prohibit the registration as trademarks of titles of periodical publications or broadcasts, fictional or symbolic characters, human characters, and names and titles of artistic groups, except when requested by the holder of the corresponding reservation of rights or with their authorization.

11. The IMPI’s powers are expanded to promote innovation and technology transfer through technical support activities, legal advice on licensing and assignments, the design of collaboration schemes, and coordination with the Secretariat of Science, Humanities, Technology, and Innovation to promote the protection of intellectual property and scientific advancement. The IMPI’s powers are expanded to establish rules for the filing, substantiation, and resolution of requests for declarations of infringement through electronic means.

12. A definition of "intangible assets" is incorporated, defined as "those intangible assets resulting from ideas, knowledge, creativity, and innovation subject to industrial protection."

13. The LFPPI is comprehensively amended to use inclusive language.

Finally, the transitional provisions establish that the decree would enter into force the day following its publication in the Official Gazette of the Federation.

galicia.com.mx