Building a new IP environment for business
The last few months have been particularly busy for Mexican intellectual property. Important developments in patents, trademarks and copyright are changing the shape of the system—for good and for bad—as international free trade agreements drive further changes in the short term.
Since its foundation, Jorge Amigo led the Mexican Institute of Industrial Property (IMPI). Under his leadership IMPI grew as a vehicle that helped changes in the Mexican law of 1991 and 1994 to become a reality; the system achieved a stability that led to the recognition of IMPI as an international reference point for prosecution.
A new director, Rodrigo Roque, was designated as head of IMPI in April 2011. His term was short, but more than enough to reach the ratification of the Madrid Protocol by Mexico and to implement a strong policy of administrative control. Roque’s days ended with the return to government of the PRI and the designation of Miguel Ángel Margáin, a well-known IP professional, as the new head of IMPI as of January 2013.
Margáin’s designation was both unexpected and controversial, as he was partner in a well-known private Mexican IP firm. However, his knowledge and experience as litigator and user of the services of IMPI have certainly helped him to deal with the many challenges he inherited, from implementation of the Madrid Protocol to the intense negotiations over what is perhaps the most important multilateral free trade agreement: the Trans-Pacific Partnership (TPP).
The National Institute for Copyrights (INDAUTOR) is still led by Manuel Guerra, also a former private practitioner, whose leadership has been regarded well enough to obtain ratification under the new government.
The trademark landscape
Without doubt the Madrid Protocol is the most important change to the trademark system in decades. The protocol’s actual effect on domestic and foreign filings is still unknown, but the determination of the Mexican government to promote the protocol remains unchanged. In July 2013 IMPI signed a cooperation agreement with ProMéxico, the government entity in charge of promoting Mexican businesses overseas, in order to finance the IP of Mexican small and medium-sized enterprises abroad, in particular those trademarks that are initiated in Mexico and then filed through the Madrid Protocol.
Meanwhile, the possibility of opposition to a trademark in Mexico remains under debate. Supporters of the opposition system claim that it will enhance the system and avoid further expensive litigation proceedings, while those against argue that opposition will harm the current efficiency of trademarks prosecution.
The patents arena
The number of patents related to computer-implemented inventions is increasing, and IMPI examiners are struggling because the criteria for the prosecution of such inventions are not clearly developed yet.
At the same time, the invitation to Mexico to enter the negotiations of the TPP had an impact in the pharmaceutical arena, as the linkage system—the system that publishes patented products in a special gazette—was finally published with composition patents and not only with active principle patents.
This fact and recognition of data exclusivity in an internal ruling by the Federal Commission for Prevention of Health Risks (COFEPRIS) complete the commitment of the Mexican government towards implementation of Mexico’s obligations under former treaties.
The debate regarding data exclusivity provisions for biotechnology drugs—particularly the time—and the eligibility of second medical uses for linkage, continues. The political pressure of the TPP negotiations has led to a pending law proposed at the Senate that intends to weaken pharmaceutical patents, including new rules for opposition to patents and compulsory licensing.
Nevertheless, such weakening seems odd and against the innovation policy towards the promotion of technology transfer from universities, which seems to be a more powerful force driving policy-making in Mexico.
