I. Patents

1. Patentable Subject Matter Under Mexican Industrial Property Law 2. Protecting a Therapeutic Treatment Under Mexican Patent Law 3. Divisional Patent Protection in Mexico 4. Additional Protection for Inventions under Mexican Law

II.Trademarks

1. Definitions and Types of Protection 2. Protecting and Maintaining a Registration 3. Defensive Registrations

III. Copyrights
IV. Domain Names
V. Litigation
VI. International Treaties Signed By México
VII. Prosecution outside Mexico

I. PATENTS
1. Patentable Subject Matter Under Mexican Industrial Property Law

For an invention to be considered as subject to patent protection in Mexico, it must, as defined under Article 12 of Mexican Industrial Property Law have:

i.	Novelty, i.e. not within the state of the art;
ii.	Inventive Activity, i.e. the invention must have a creative process not deduced from the state of the art, i.e. non-obviousness;
iii.	Industrial Applicability, i.e. the possibility that the invention be used and applied industrially.

Article 16, then defines what is not to be considered as a subject to patent protection, despite the fact that it might be new, have an Inventive Process and have Industrial Applicability:

-	Biological processes for the production, reproduction and propagation of plants and animals;
-	Biological and genetic material such as is found in nature;
-	Animal species;
-	The human body and its living parts;
-	Plant varieties (although plant varieties may be protected under the Plant Variety Law, but are not studied at the Mexican Patent Office);

Furthermore, Article 19 then indicates what are simply not to be considered as inventions:

-	Theoretical or Scientific Theories;
-	Discoveries which reveal something that already existed in nature, even though previously unkown;
-	Schemes, plans, rules and methods for mental acts, games or businesses and mathematical methods;
-	Computer Programs;
-	Forms of presenting Information;
-	Esthetic Creations and Artworks;
-	Methods of surgical, therapeutic treatment, or of diagnostic applicable to the human body or relative to animals;
-	The juxtaposition of known inventions or the mixture of known products, which change the use, size or form of the materials, unless such a combination or mixture is such that the invention cannot operate independently of their characteristic qualities or functions are modifies to accomplish and industrial result or a use which is not readily evident for an expert.

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2. Protecting a Therapeutic Treatment Under Mexican Patent Law

Article 19.VII of Mexican Industrial Property Law states that "therapeutic and surgical methods as well as diagnostic treatments applicable to the human body treatments" are not to be considered as inventions.

This limitation is an inheritance from the 1973 Law of Inventions and Trademarks, and was developed mainly with the intent to protect socialized medicine. In fact, the 1973 Law went as far as to also develop "Certificates of Inventions" which granted a very limited protection for medicines and chemical compounds with the sole intention of trying to provide incentives for the Socialized projects of the Government at the time.

The Law changed initially in 1991, and subsequently was again modified in 1994, to try and adapt to the speed of globalization, expanding not only the protection for matter which could be patented, but also expanding the term for which a patent was granted to its current twenty-year term.

However, one of the issues that was not accepted by Mexican Legislators, was the possibility of protecting methods of therapeutic treatment, perhaps hanging on to the same ideals of the predecessors with regard to the need to protect socialized medicine, and its availability for the masses in Mexico.

To try and avoid objections raised by Examiner's during prosecution of a method which might be considered as therapeutic, the following questions must be looked at:

-	A method of medical treatment is any method which aims at curing a pathological condition. Therefore, any method which does not aim at curing, alleviating, or preventing a disease or restoring health does not have to be considered by the Patent Office as a medical treatment method in its strict meaning;
-	Secondly, the principal use of the method at issue must be determined. In other words, even if the method at issue may be used for therapeutic ends, the principal object of the method must be established before concluding that the method is in fact a method of medical treatment. Thus in light of this, it now seems possible to obtain patent protection for a method of treating a person or an animal, if this method does not aim primarily at preventing or curing a pathological condition.
-	Finally, direct therapeutic treatment claims are usually objected by the Examiner directly. Therefore, one must also determine if secondary use, or Swiss-style claims are available. It has been the common practice of Mexican Examiner's to permit the protection of these claims aimed at protecting the use of a compound in a medicament used in a therapeutic method.

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3. Divisional Patent Protection in Mexico

Mexican Patent Law exclusively provides for the protection of divisional applications, and does not permit the filing of Continuation-in-Part or CIP applications as under US practice, nor does it foresee the possibility of filing Continuation applications.

Article 43 of Mexican Patent Law states that an application may include the "claims of a single invention, or those of a group of inventions related in such a way that they make up a single inventive concept."

Divisional applications under Mexican Law are usually at Examiner's request when he has determined that applicant is claiming more than one invention in the application, and that the inventions are mutually exclusive, i.e. can subsist independently of each other.

The term for which divisional applications are allowed, is for twenty years taken from the date of the original application.

Unfortunately in practice, the Mexican Patent Office does not study these divisional applications under a "fast-track" program, and the delays in allowing these cases, usually grant a very limited protection to its owner.

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4. Additional Protection for Inventions under Mexican Law

Aside from Patents, Mexican Industrial Property Law provides protection for the following types of inventions:

 

Utility Models Utility Model status is provided for all those inventions which comprise all "object, utensils, apparatus or tools, which, as a result of a modification in their configuration, structure or form have a different function with respect to the parts of which it is made up, or advantages with respect to its use." Utility Models are granted for a ten year period from their date of filing, and are subject to annuity payment at the time they are allowed

Industrial Designs Industrial Designs granted for a fifteen year period from their filing date, subject to the payment of annuities once allowed, and their protection is separated into: · Industrial Drawings which are considered the combination of figures, lines or colors that make up an industrial product with an ornamental mean, giving it a unique appearance; · Industrial Models are those made up of all three dimensional forms which serve as a model or pattern for the manufacturing of an Industrial Product, giving it a unique appearance as long as it does not involve technical improvements. Integrated Circuits The protection of Integrated Circuits became available in the amendments adopted in 1999, and grants these inventions a protection for a ten year period taken from the date of filing, again, subject to payment of annuities once allowed. Plant Varieties Protection is not obtained through the Mexican Patent Office, but rather through the Agriculture Department, added to the fact that the protection is provided by a different Law, namely the Federal Plant Variety Law. To obtain protection, known as a titleholder's right, the plant variety must be new, different, stable and homogeneous. The term of protection is of 18 years for perennial plants, and of 15 years for all the remaining plant varieties.

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II. TRADEMARKS

1. Definitions and Types of Protection

A trademark is defined as a word, symbol, design, combination of letters or numbers, shapes, designs or any other device that identifies and distinguishes products and services in commerce.

Obtaining the registration of a trademark provides legal protection against third parties.

A registered trademark is in force for ten years if and when the trademark registration is being used inside Mexican territory.

Mexican Law provides protection for four types of trademarks:

-	WORDMARKS;
-	DESIGNS;
-	COMBINATION TRADEMARKS, name and design trademarks;
-	THREE-DIMENSIONAL TRADEMARKS, trademarks registered as packages or get-ups;

Another legal figure for which protection is available, is that of Commercial Advertisements, or slogans, which are phrases or sentences which are used as publicity among the consumers to announce products, services, establishments or negotiations.

The third legal figure for which protection is available, are Commercial Names, which distinguish industrial, service lending or commercial companies or establishments. Protection is obtained by the use of the commercial name in Mexico, and is protected only within the territory where actual consumers live.

To obtain protection against third persons, Commercial Names are published in the Official Trademark Gazette, prior proving use of the Name.

All of the above registrations are allowed for periods of ten years from (Trademarks and Slogans from their filing date, and Commercial Names from their publication date) and may be renewed for the same extension of time.

The renewal of a Trademark will prosper if the owner, or the recorded licensee declares that use of the Trademark has not been discontinued in Mexico for a period equal to, or greater than, three consecutive years.

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2. Protecting and Maintaining a Registration

Before filing a trademark application, we recommend carrying out a trademark search to determine possible impediments in the registration process of the proposed name. Our office has a turnaround time for word-mark searches of 48 hours.

The most important reason to register your trademark is to preserve the rights of this asset. It is important to note that if you do not register and make use of a trademark registration, this trademark can be applied for and obtained by any interested third party.

Although our Trademark Law provides rights to mere trademark users, asserting trademark rights based on mere use of a trademark is expensive and time consuming, not to mention the fact that you may fail if your use is not sufficiently proved.

Mexico follows the Nice Convention for the classification of goods and services since November of 1989, until ratified at a later date, but only allows one class per application.

Mexican Trademark registrations are granted for a ten year period from their filing date. However, the Law also indicates that a registration is subject to its cancellation if its use has been discontinued for a period of three consecutive years; namely the years either prior to its renewal, or prior the filing of a cancellation action by an interested third party.

In the eyes of the Law, accepted use of a Trademark in Mexico, is only made by either the owner, or by the recorded licensee, therein lying the importance of recording license agreements before the Mexican Trademark Office. Additionally, the license agreement only becomes effective against third parties, when it is recorded before the Trademark Office.

License agreements must be carefully drafted to assure, not only the quality control of the licensed products and/or services by the trademark owner, but also to protect the rights granted under Mexican Trademark Law to the owner and the licensee.

A trademark license agreement should be reviewed by an attorney who has knowledge in these matters, since the improper drafting or enforcement of a license agreement or the failure to record a license agreement can result in the nullity of the trademark.

The owner of a registered trademark may grant licenses on behalf of one or more parties, or for some or all products or services protected by the trademark.

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3. Defensive Registrations

Because use of a Trademark need not be made prior to its registration, Trademarks can also be registered as a defensive measure. Therefore, even in potential markets, you can prevent a third party from registering or using a certain trademark if you are the first party to obtain its registration.

By obtaining a registration in advance of the trademarks' use, you can be assured of the unfettered ability to exclusively use your trademark in Mexico provided you begin use before the registration is subject to cancellation for nonuse, by an interested third party.

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III. COPYRIGHTS

Copyright Protection in México

Copyrights protect the scope of human artistic endeavors, including literature, music, drama, dance, pictures, sculptures, paints, graphics, architecture, design, movie and software, as well as any compilation of these.

Mexican Copyright Law allows for the protection of titles of periodical publications such as newspapers, magazines, calendars, catalogs and guides among others, as well as characters (both human and fictitious), periodical broadcasts (radio and television) and peoples and artistic group's names. This protection is in force only for one year, although they may be renewed, as long as its owner proves to be using the work in Mexico. Characters are protected for a period of five years, and they are also able to be renewed.

Regarding magazines and newspapers, it is necessary to obtain a certificate, issued by the State Department, to enter them into circulation in the Mexican Market.

Protection of the work, begins as soon as it enters into existence, i.e. as soon as the idea becomes material, with no need of registration.

However, the advantage of obtaining a Copyright is that the author, or his assignee, is recognized as the owner, and grants the owner the legal basis with which to attack copyright misuse.

Copyright in Mexico includes two different aspects:

1. A moral right, or the right of the author to be recognized as such for eternity;

2. The economic right, which consist in the right to use his creation, and receive economic gain from it.

This second right, may be transferred, and is in force during the Author's life and 75 years after his death

Copyright Treaties, and Their Implications

As of December 20, 1968, Mexico is a signatory of the Berne Convention, in which a work which is protected by the country member’s Copyright Law, it is automatically protected in all other member countries.

The North American Free Trade Agreement (NAFTA), provides that foreign works shall be protected under Mexican Copyright Law, as if they were works done by a Mexican National. and that therefore, the works of a US or Canadian citizen are fully protected under Mexican Law.

The Interamerican Convention for Copyright in Literary, Scientific and Artistic pieces which establishes that "when any work has been created by a citizen of any member country or by a foreigner living in a member country and said creation has been granted protection through a copyright, the other member countries must grant protection without any further formality."

Therefore, copyright protection granted by Mexican Legislation, allows the right-holder not only to be protected in Mexico, but also in the countries which have become members of international treaties, even without any registration or title in these countries.

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IV. DOMAIN NAMES

Brief explanation of Domain Names in Mexico

Domain names under the suffix .mx are registered before NIC.-MEXICO (www.nic.mx) .

NIC-MÉXICO is a private institution, which belongs to TEC. DE MONTERREY University. Our country follows the principle "first come, first serve", regarding domain names registration.

Additionally, there are no restrictions such as:

i)	Having a trademark registration or application;
ii)	Having a company registered before the Mexican Secretary of Commerce;
iii)	Excluding generic names (objects, services, religions, professions, etc.) .

However, NIC.-MEXICO reserves its rights to refuse domain name registrations which are offensive or affect third parties rights.

The protection offered by Mexican Laws only refer to the illegal use which could be made of a trademark registration in web pages or domain names, but no law establishes the possibility to expunging ownership, or of the annulment or cancellation of a domain name based on a registered mark or a reservation of rights.

Consequently, NIC. MEXICO has appointed WIPO as the provider of controversy solution services for domain names .MX.

Procedure before WIPO

The following are the cases in which it is possible to expunge a domain name before WIPO under the .MX termination:

i.	When the domain name is similar or identical up to the point that results misleading with respect to a product or service mark on which the plaintiff has rights; and
ii.	When the title holder has no legitimate rights or interests with respect to the domain name; and
iii.	When the domain name has been registered and it is used in bad faith.

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V. LITIGATION

Our Litigation Department offers a wide variety of services to effectively protect your Industrial and Intellectual Property Rights in Mexico. Together, we can design a litigation strategy to obtain the best results for your company, at the least possible cost.

Mexican Industrial Property Law has been adapted to effectively discourage Unfair Competition. By adding procedures such as seizure of infringing merchandise, temporarily and definite closure of business involved with unfair competition practices, and even administrative arrests, our Industrial Property Law is an effective instrument to insure full protection of your rights.

Among the actions observed by our Law are as follows:

-	Nullity Action: This type of action can be brought against a registered trademark which is considered to invade previous rights, or against a registered trademark granted in contravention to applicable law.
-	Caducity/Cancellation Action: If a registered trademark is not used in Mexico for three consecutive years at least in one of the products for which it was registered, its registration may be declared "caduca", that is, cancelled.
-	Cancellation Action: When a registered trademark becomes generic or commonly used as a name and not as a trademark, the cancellation of its registration may proceed.
-	Infringement Action: This type of action can be brought against illegal use of a trademark, a patent, a utility model, a commercial name or even an appellation of origin. Generally speaking, all types of conducts known as unfair competition can be penalized by this type of action.
-	Commercial Infraction: All illegal use of Intellectual Property rights, (copyright infringements) are known in our law as commercial infractions. Such actions are brought before the Mexican Trademark Office.

Recent reforms to our Mexican Trademark Law provide that criminal actions can be brought against forgery of trademarks, provided the forgery is at commercial scale and with speculation purposes.

It is also possible to seek compensatory damages and lost profits via a Civil Action. Our law states that such damages cannot be less than forty percent of the sales price of infringing products.

Our firm can assist you in every litigation aspect, from the first instance through the appeal procedures before the Circuit Courts. We also carry out commercial searches, localization of infringers, warning letters and cease and desist agreements, all suited to your special needs.

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VI. INTERNATIONAL TREATIES SIGNED BY MEXICO

Mexico is part of the most important treaties concerning Intellectual Property, such as the following:

-	Paris Convention for the Protection of Industrial Property, since July 26, 1976;
-	Berne Convention for the Protection of Literary and Artistic Works, since January 24, 1975;
-	Inter-American Convention for Copyrights in Literary, Scientific and Artistic Pieces since October 24, 1947;
-	Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, since May 18, 1964;
-	Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of their Phonograms, since December 21, 1973;
-	Nairobi Treaty on the Protection of the Olympic Symbol, since May 16, 1985;
-	Locarno Agreement Establishing and International Classification for Industrial Designs, since January 26, 2001;
-	Nice Agreement Concerning the International Classification of goods and services for the purposes of the registrations of Marks, since March 21, 2001;
-	Vienna Agreements Establishing and international Classification of the Figurative elements of marks, since January 26, 2001;
-	Strasbourg Agreement Concerning the International Patent Classification since January 26, 2000;
-	Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, since September 25, 1966;
-	Patent Cooperation Treaty (PCT), since January 01, 1995;
-	Budapest Treaty on the International Recognitions of the Deposit of Microorganisms for the Purposes of Patent Procedure, since March 21, 2001;
-	WIPO Copyright Treaty, since February 24, 2000;
-	WIPO Performance and Phonograms Treaty, since May 11, 1999.

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VII. PROSECUTION OUTSIDE MEXICO

Our firm has associates in every country in the World. We can provide every Industrial Property service you may need throughout Latin America or the rest of the World.

Our associates are carefully chosen amongst the best in the field so as to maintain high standards of quality our clientele is accustomed to.

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