In Mexico, the Federal Law for the Protection of Industrial Property (FLPIP) provides the legal system governing trademarks, patents, utility models, designs, trade secrets, designations of origin and integrated circuits. Of particular significance in Mexican law is its unique concept of utility models, which in Mexico are limited to improvements to existing tools and distinct from the general broad conception of an invention, contrary to the general concept of utility patents. Minor inventions subject to utility model protection in most other countries are covered in Mexico under the patent concept and are thus subject to the same substantive requirements, such as novelty, inventive step and industrial application.
The FLPIP, which became effective on 5 November 2020, abrogated and replaced the former Mexican Industrial Property Law. Significantly for the pharmaceutical industry, the new industrial property law has positively accepted patents claiming the use of known compounds and compositions, provided that these are novel. Notwithstanding this, examiners at the Mexican Patent and Trademark Office (MPTO)2 have consistently accepted inventions claiming not only active ingredients but also formulations, use and second-use dosages and processes, although some complications have arisen when trying to enforce the patent linkage system on inventions claiming other than active ingredients.
Data protection in the pharmaceutical field is not specifically covered in domestic legislation pertaining to industrial property. Nevertheless, protection of this kind is available under the applicable provisions contained in international treaties such as the new free trade agreement between Mexico, the United States and Canada.3 To enforce protection, however, the data owner needs to resort to the courts to obtain compelling remedies for the regulatory authority to provide the protection agreed upon in the international treaties. The relevant Mexican regulatory authority, Cofepris, has yet to set up an administrative process to comply with the applicable international legal provisions, which prevents it from addressing petitions; accordingly, the data owner needs to institute appropriate legal proceedings to compel Cofepris to guarantee appropriate protection.
The Federal Law on Copyright provides protection to artistic works and includes a right known as the Reserva right, which grants protection to the names of musical groups, television series and characters, even their psychological characteristics. Infringing activity pertaining to copyrights that involves commercial activity likely to result in financial gain to the detriment of the copyright owner must be addressed through the MPTO. Legal disputes over ‘patrimonial rights’ are thus to be tried by the MPTO, although the Mexican Copyright Office4 can oversee attempts at conciliation between the parties. Binding decisions are handed down by the MPTO on the commercial infringement of copyright (subject to the different appeal routes available), but the Copyright Office is limited to making efforts to find an amicable solution between the parties and it has no binding authority to resolve the issues in dispute.
1 Carlos Pérez de la Sierra is a senior partner and Efrén del Olmo is a junior associate at Calderon &
De La Sierra.
2 Instituto Mexicano de la Propiedad Industrial (IMPI); https://www.gob.mx/impi.
3 Known as T-MEC, USMCA and CUSMA in Mexico, the United States and Canada respectively.
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