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Intellectual Property

The term Intellectual Property encompasses a wide range of legal rights which can arise from the Mexican Law on Industrial Property, the Mexican Copyright Law, and the Mexican Plant Breeder’s Right Law.

Find out which forms of protection are the most suitable for your ideas/works and how to ensure these ideas/works are adequately protected here:

Intellectual Property:

You may already hace some of these rights, such as Copyright or Trade Secrets, you may be able to acquire others such as patent rights by following one or more of the respective registration process. The purpose of this information is to help you to decide which forms of protection are the most suitable for your ideas and how to ensure these ideas are adequately protected.

Patents

Patent drafting, filing and prosecution services in Mexico and all over the world are rendered through our wide network of associates. Information on the Mexican Patent Procedure can be found here. An invention is defined by law as any human creation which let matter and/or energy existing in nature be transformed in order to fulfill a real need of a human being.

Are not considered as inventions:

1. Discoveries, scientific theories or its principles;
2. Mathematic methods;
3. Literary, artistic or any other aesthetic work;
4. Schemes, plans, rules and methods for the exercise of intellectual activities, for games or for economic-commercial activities or to conduct business;
5. Computer programs (software)
6. The ways of presenting information;
7. The biological and genetic material, as it is found in nature, and
8. Surgical, therapeutical and diagnostic treatment methods for human being and animals, and
9. The juxtaposition of known inventions or combination of known products, unless such combination or fusion cannot function separately or that the characteristics qualities or functions thereof are modified to obtain an industrial result or a non-obvious use for a person of ordinary skills in the corresponding technical field.

For items 3) to 5) above (not considered as inventions) protection is granted through Copyright Law.

Protection is granted for almost all new and useful invention, irrespective of the technological field on which it was developed. Consequently, protection is granted, inter alia, for chemicals, pharmaceutical compounds; alloys, inventions in which microorganisms are used, applied to or derived from, biotechnological processes for obtaining drugs, medicines in general, beverages and foodstuffs for human consumption, fertilizers, plaguicides, fungicides and products with biological activity.

Patentability is excluded only for

1. Inventions whose commercial exploitation is contrary to public order or contravenes any legal provision, including those whose exploitation must be prevented to protect health or life of people or animals or plants, or to avoid serious damage to the environment. In particular:
   1. Procedures for cloning human beings, and their products;
   2. Procedures for modifying germinal genetic identity of the human being, and its products when these imply the possibility of developing a human being
   3. Uses of human embryos for industrial or commercial purposes, or
   4. Procedures for modifying genetic identity of animals, which entail for them suffering with no substantial medical or veterinary utility to man or animal, and the resulting animals of said procedures;
2. Plant varieties and animal breeds, except in the case of microorganisms;
3. Essentially biological procedures for obtaining plants or animals and products resulting from these procedures.

   The foregoing shall not affect the patentability of inventions whose object is a procedure microbiological or any other technical procedure or a product obtained by such procedures;

4. The methods of surgical or therapeutic treatment of the human or animal body and the methods of diagnosis applied to these, and
5. The human body in the different stages of its constitution and development, as well as the simple discovery of one of its elements, including the total or partial sequence of a gene.

The biological material isolated from its natural environment and obtained through a technical procedure, may be the object of a patentable invention, even if it already exists previously in nature.

The industrial application of a total or partial sequence of a nucleic acid or protein should be disclosed expressly in the patent application.

Utility Model. Utility models are those objects, utensils, appliances or tools that, as result of a modification in their arrangement, configuration, structure or shape, show a different function with respect to the parts that comprise it, or advantages in terms of its usefulness.

Industrial Designs include both industrial models and industrial drawings.

Industrial Model will be understood to be any three dimensional shape which serves as type or mold for the manufacturing of an industrial or artisan product, and which gives it a special appearance, so long as it does not imply technical effects.

An Industrial Drawing will be understood to be any combination of figures, lines or colors which are incorporated into an industrial or artisan product for purpose of ornamentation and which gives it a peculiar and unique appearance.

Duration

Patents: 20 years as from the official filing date in case of convention cases, or of the international filing date in case of the national phase of PCT patent applications.

Utility Models: 15 years as from the official filing date.

Industrial Designs: 5 years, from the filing date, renewable for successive periods of the same duration up to a maximum of 25 years.

Applicant

Inventor(s) and his/her assignee(s), if the application is filed by the assignee(s) the respective assignment should be filed. The owner of a patent has the exclusive right to exploit the invention covered by the patent.

If you think your idea may be patentable see us before disclosing the idea to anyone else. Once an idea has been made public any patent application filed after 12 months of said public disclosure will be invalided and you will have forfeited any right to protection.

Formal requirements for filing convention patent, design and utility model applications

1. Title of the invention, full name, address and nationality of inventor(s) and/or assignee(s).
2. Abstract, specification and claims in Spanish. Foreign languages may be accepted, conditioned.
3. Formal drawings. All in 21.5 cms x 28.0 cms size or A4 size.
4. Power of Attorney. If granted by a corporation, document must indicate paper(s) authorizing grantor to grant powers of attorneys on behalf of said legal entity. Powers of Attorney granted both by legal entities and individuals must be executed by two witnesses who shall furnish their full name and address.
5. Assignment document, if.
6. Certified copy of home application, if priority is to be claimed. The Spanish translation thereof must be attached to the certified copy of the priority document.

Information/documents in points 1, 2 and 3 shall be given upon filing application in order to secure and obtain an official filing date.

Trademarks

Protection of Trademarks, including product and service marks, either individual or collective, company names, brand names, slogans and logos, including the preparation, filing and prosecution of Trade Mark applications in Mexico and all over the world. Information on the Mexican Trademark registration process is available here.

Registrable:

1. Any word or group of words, and visible figures, distinctively enough to clearly identify goods or services upon which said words and/or figures are used, from other goods or services of the same class or species;
2. any three-dimensional figure meeting the above characteristics;
3. commercial names of partnerships; and
4. individuals names of physical persons, provided that there is not homonymous already registered through a trademark.

Not Registrable, Inter alia,

1. moving or animated words, figures and three-dimensional forms;
2. proper technical or common use names of the products or services to be protected with the trademark;
3. three-dimensional forms belonging to the public domain or that became part of the common use and those that have no originality, and the usual and regular configuration of products as well as those shapes giving either by nature or the manufacturing process;
4. words, figures or three-dimensional forms describing the goods or services to which these are applied. Words designating species, quality, quantity, destination, worth and origin of goods or the production season are also included in this restriction;
5. a trademark similar to a previous registered trademark, in force, protecting the same or similar goods or services;
6. a trademark identical or similar to the point of confusion to a trade name applied to a commercial establishment manufacturing or selling goods or rendering services, as applicable similar to those of the trademark application, provided that the trade name has been used before the filing date of that stated in the trademark application.

Unlike patents and designs, it is possible to use a trademark before applying for registration and, in some cases, it is necessary to show that the mark has been used in commerce before it can be registered.

If you are involved in exporting your products/services abroad, it is important to consider protecting your trademarks abroad, as in many countries you can only acquire rights by registering your trademarks.

Formal Requirements for Filing Trademark Applications

-Phonetic and device searches

1. Name of the mark;
2. Detailed list of goods/services upon which the mark us applied. These must fall into one single class of the International Classification (Nice Agreement); and
3. Sample of the device or design.

-Trademark registration

1. Name and/or figure of the mark;
2. Detailed list of goods/services upon which the mark is applied, these must fall into one single class of the International Classification (Nice Agreement);
3. Date of first use in commerce in Mexico (if ever used the trademark in Mexican territory);
4. Name, full address and nationality of applicant;
5. Location of applicant´s principal establishment and/or factory address wherein articles are sold/manufactures or wherein services are rendered;
6. Country and date of filing of the priority application, if applicable;
7. Ten (10) black and white prints of the mark, and ten (10) color labels if colors are to be claimed;
8. Power of Attorney. The same as patents;
9. Certified copy of home application, if priority is to be claimed, accompanied by the Spanish translation thereof; and
10. Assignment of rights, if needed.

INFORMATION IN POINTS 1-6 SHALL BE GIVEN UPON FILING APPLICATION SO THAT OFFICIAL FILING DATE AND PRIORITY RIGHTS MAY BE SECURED.

FLOW CHART FOR TRADEMARKS IN MEXICO

The following flow chart intends to give the reader an idea of the procedural stages followed by trademarks starting from the filing of the application with the mexican patent and trademark office up to the renewal of rights.

Industrial Designs

Registration of Industrial Design (both industrial models and industrial drawings), including the preparation, filing and prosecution of Industrial Design in Mexico and all over the world through our wide network of associates. The process of registering an Industrial Design in Mexico can be found here.

An Industrial Model will be understood to be any three dimensional form which serves as type or mold for the manufacturing of an industrial product and which gives it a special appearance, so long as it does not imply technical effects. For example, a new shape for a bottle or a chair can be registered as a Model. The protection given by a registered model is based on the visual appearance of the article and therefore this form or protection is useful where the article itself is not new but the shape is new indeed.

An Industrial Drawing will be understood to be any combination of figures, lines or colors which are incorporated into an industrial product for purpose of ornamentation and which gives it a peculiar and unique aspect. As with patents, it is important not to show your new design to other people before you have applied for a Design Registration.

Copyrights

Though the rights arise automatically on the creation of the work, protection of artistic creations through the Mexican Copyright law is a wise way of recognition of the property of art works. Information on the Copyright registration process can be found here.

Copyright protects original literary or artistic works. In accordance with the Mexican Copyright Law, it is possible to obtain protection in the following categories: literature, music, drama, dance, paintings, sculpture, comics and cartoons, architecture, cinematography, radio and TV programs, photography, applied art and design, and all artistic creations in general.

Plant Breeder’s Rights

New, distinct and homogenous varieties of plants can also be protected in Mexico through the Mexican Plant Breeder’s Rights law.

Plant Breeder’s Rights

New, distinct and homogenous varieties of plants can also be protected. In such a case, the owner of the right gains control of the right to reproduce the plant. Please contact us if you require further information in this regard.

Searching

Patent and Trademark searching services in Mexican Patent and Trademark’s databases are rendered with a professional team. Information on searching can be found here.

Searches

A search will save time and money by finding similar ideas or trademarks which have already been registered. Patents will not be granted for old ideas so it is advisable to have a preliminary search conducted before investing in a patent application. A search will help you decide which aspects of your invention or design are new and therefore what breadth of protection you could obtain.

Patent searches are not comprehensive since, by law, pending patent applications remain secret until they are published eighteen months after the filing date or the priority date. For trademarks a search will show if anyone else has registered that or a similar trademark. Novopatent I.S.S.C. can carry out a trademark search in the Mexican PTO’s database. By using this capability we can provide you with a comprehensive and up to date report on the novelty of your proposed trademark.

Renewals

A renewal and reminder system is implemented at our office to assist you in safekeeping important rights.

Licenses and Assignments

Drafting and negotiation of agreements, licenses and assignments for all areas of Intellectual Property Rights.

Licensing

Patents, Trademarks and Registered Designs are forms of property, which means you can sell them in the same manner as you might sell other properties. You can also lease these properties to third parties (license them). By licensing the right to use your intellectual property you can maintain ownership of the rights and collect royalties from the users. Novopatent I.S.S.C can assist you in the preparation of license agreements which ensure that you optimize the return from your intellectual property without jeopardizing your rights.