Recently, Mexico introduced significant amendments to its Federal Law for the Protection of Industrial Property, affecting both trademark and patent prosecution in the country.
With regard to distinctive signs, the reform focuses on three main aspects: (i) it expressly recognizes position, motion, and multimedia marks, and clarifies that a trademark may consist of a combination of these categories; (ii) it strengthens the grounds for refusal by excluding technical or commonly used terms that lack distinctiveness, as well as signs identical or similar to elements of cultural heritage, traditional knowledge, or cultural expressions of Indigenous and Afro-Mexican communities; and (iii) it introduces the possibility of suspending the prosecution of trademark applications when related nullity, cancellation, or lapse proceedings involving relevant signs are pending.
Now, regarding patents, the most important amendments are the inclusion of provisional patents (mirroring the US practice on that matter), and the time reduction for issuing the resolution informing the substantive examination, to a maximum of one year (aligned with the recent reduction in the number of substantive examinations from four to two). This reform also introduces the restoration of priority rights and the possibility of reinstating the application if a response to an office action was not timely filed. Finally, upon this reform, patent owners could request patent term extension (PTE) for unreasonable delays in the Marketing Authorization process, up to a maximum of 5 years.
All of these measures are designed to streamline and significantly reduce processing times during prosecution of patent applications. On the trademark side, the changes aim to expand and modernize the catalogue of registrable signs, adapting it to new market realities.
