Make sure your utility model is protected in Mexico

As a result of the Industrial Property Law (IPL), reliable information on utility models in Mexico can now be found in international publications. However, it is still worth considering the points outlined below, which will help to dissipate remaining doubts on the topic.

Protection for utility models in Mexico is found in both the IPL and the Regulations to the IPL (RIPL)

So-called petty patents are known in Mexico as utility models, a protection that is granted through registrations. According to article 28 of the IPL, utility models are considered to be objects, utensils, apparatus or tools that, as a result of a modification in their arrangement, configuration, structure or form, offer a different function with respect to their component parts or advantages with respect to their use. Those utility models that do not comply with the above definition cannot be registered.

As stated by article 27 of the IPL, utility models that are new and susceptible to industrial application are eligible for registration.

On the grounds of article 47 of the law, a utility model application shall be accompanied by:

• A description of the invention, which should be sufficiently clear and complete in order to permit an accurate understanding of it, and where appropriate, to serve as a guide for a person with average skill in the art to make it. It shall also include the best method known to the applicant of carrying out the invention when this is not clear from the description.

• The technical drawings required for the understanding of the description.

• One or more claims, which should be clear and concise and may not exceed the contents of the description.

• An abstract of the description of the invention, which shall serve solely for publication and as a source of technical information.

Although the abstract of the description is used in publication and as a source of technical information, such publication is only applicable for patents of inventions and not for utility models.

Utility models are published in the official industrial property gazette when they have been granted.

In view of the fact that utility models are considered to be exclusively objects, utensils, apparatus or tools, a utility model registration cannot be obtained for applications dealing with chemical compounds or biological material.

Applications for the grant of a utility model are examined not only according to the formal requirements, but also against novelty and substance. Once the application has been filed, the Mexican Institute of Industrial Property (MIIP) makes a formal examination of the documents, and may require that further details or clarifications be provided wherever it considers this necessary. If the applicant does not fulfill this requirement within two months, he will have an automatic extension period of two months to do so. However, if the official requirement is not fulfilled within the additional period of two months, the application will be considered abandoned.

Once the utility model application has overcome the formal requirements (if any), the MIIP carries out a substantive examination of the invention in order to determine if the conditions specified by law are satisfied at all. To conduct said examination, the MIIP may accept or require the findings of substantive examinations or the equivalents conducted by foreign patent offices, or where appropriate, a mere copy of the registration granted by any of the said foreign offices.

The automatic extension period of two months granted by article 58 of the Law may be used to comply with the official requirement, otherwise, the application will be considered abandoned.

An absolute novelty requirement applies to all utility model applications. Accordingly, the term new means anything not in the state of the art. Article 12 of the IPL defines state of art as the body of technical knowledge that has been made public by oral or written description, by exploitation or by any other means of dissemination of information both within the country and abroad.

Because of the nature of utility models, it is important to bear in mind that the registration of these inventions is obtained solely by complying with the novelty and industrial applicability requirements. Inventive step requirement is not applicable for utility models applications.

According to article 29 of the IPL, the registration of utility models shall be effective for a term of 10 years, which shall not be renewable and shall be counted from the filing date of the application and be subject to the payment to the relevant fees.

The applicant may convert a patent application into one for the registration of a utility model and vice versa when it appears from the contents of the application that the subject matter is not consistent with the title of protection applied for.

The applicant may make such a conversion of the application only within the three months following the filing date or within three months following the date on which the MIIP requires him to make the conversion, provided that the application has not been abandoned. If the applicant does not convert the application within the time allowed by the MIIP, the application shall be considered abandoned (article 49 of the Law).

Divisional applications are possible. When an application has to be divided, the applicant shall submit the description, claims and drawings necessary for each application, with the exception of the documentation relating to the priority claimed and its translation included in the initial application. Furthermore, where appropriate, and in strict accordance with the stipulated in article 48 of the Law, an assignment of rights and the power of attorney shall also be filed.

Mexico has been a member of the Patent Cooperation Treaty (PCT) of 1970 since January 1 1995. Consequently, utility model registrations in Mexico may be applied for in a PCT international application designating Mexico.

The disclosure of an invention shall not prevent it from continuing to be considered new when, within the 12 months prior to the filing date of the application or where applicable prior to the recognised priority date, the inventor or his assignee has made the invention known by any means of communications, by putting it into practice or by displaying it at national or international exhibition. However, if the invention has been published by a foreign patent office, it shall no longer be considered as new.

The individual or his assignee who creates a utility model shall have the exclusive right to use it for his benefit, either himself or through others with his consent in accordance with the provisions of the IPL and the RIPL.

In addition to the above, it is extremely important to point out that just some months ago the Senate's Gazette published an initiative containing a decree project for adding articles 30 bis, 30 bis 1 and 30 bis 2 to the Industrial Property Law in order to contribute to the improvement of the country's competitiveness, and to make it easy for innovators and entrepreneurs to obtain legal protection for the products they develop.

In a very brief summary, the initiative suggests that once the form examination is concluded, a favourable resolution may be issued, which means that no substantive examination shall be carried out.

Even though this initiative is still merely a proposal, Mexican IP agents have voiced in a unanimous manner their doubts. It is believed that many conflicts would arise if it is adopted, even if the recitation of the new articles contemplated the invalidity of protected utility models when granted in contravention to the law. As of yet, there has been no further information in this respect.

Heriberto Lopez
		Heriberto Lopez is an industrial chemical engineer. He joined Becerril Coca & Becerril in 1990. Heriberto has a strong background in several fields of industry and engineering as well as in technology assimilation and negotiation. He is an expert in patent application drafting and prosecution in Mexico and abroad in the chemical, pharmaceutical, and biotechnology fields. He became associate of the firm in February 2009. As our patent director, Heriberto is in charge of all filing and prosecution aspects involved in patent, utility model and industrial design applications both in Mexico and in foreign countries, including official actions on the merits of inventions issued by the corresponding patent offices, analysis of patentability and fast-track procedures. Heriberto is a member of AMPPI (Mexican Association for the Protection of Intellectual Property), ASIPI (Interamerican Association of Intellectual Property), LES México (Licensing Executives Society) and he is member and qualified expert of the CONIQQ (Association of Chemical Engineers and Chemists). His work in patents has been recognised in the Euromoney Guide to the World's Leading Patent Law Experts since 1997.