Further to our communication regarding possible changes in prosecution and maintenance, we can now confirm that the Industrial Property Law will be amended. One of the most relevant amendments is the protection term for Industrial Designs, which will change from a non-extendable 15-year term to a 25-year term, renewable every 5 years. As such, the amended Article 36 of the Industrial Property Law (IPL) will now read:
Article 36.-
The registration of industrial designs shall have a term of 5 years, starting from the filing date of the application, renewable for consecutive terms of the same duration up to the maximum of twenty-five years, subject to payment of the relevant fee.
Artículo 36 BIS.-
Registration of Industrial Designs and its renewals will be published in the Gazette of the Institute.
Given the above, the following should be noted:
FIRST.
The amendments to the Law will come into force on April 25, 2018.
SECOND.
With regards to the Design applications currently in prosecution, interested applicants can request to prosecute the Design application based on the recent amendments to the Law. Applicants will have a term expiring June 05, 2018 to file the corresponding writ requesting the change.If the above change is requested, the Mexican Patent Office (MXPTO) can request re-filing documents, completing missing information, clarification or any other amendment required to continue the prosecution of the original Design application based on the amendments to the Law.
THIRD.
For Industrial Designs (Design Patents) granted prior to April 25, 2018, these will keep the granted protection term until their expiration and shall continue paying the quinquennial or annuities, as applicable, according to the corresponding fees.
FOURTH.
Industrial designs (Design Patents) granted prior to April 25, 2018 may be renewed for up to two successive periods of five years after their 15-year expiration without the corresponding term of protection exceeding twenty-five years starting from the application filing date.
The first renewal request must be submitted within six months prior to the end of the original fifteen-year term in the terms provided in the Law.
Therefore, for design applications, and to obtain the twenty-five-year protection term (instead of 15 years as is currently the case), we suggest instructing us to file the writ requesting the MXPTO to continue prosecution of the Design application based on the Law amendments. The writ needs to be filed by June 05, 2018, and to comply with this filing date, we request you instruct us by May 24, 2018.
For Designs (Design Patents) filed after April 25, 2003, we recommend filing the request for renewal within six months prior to the end of the original fifteen-year term.
For Designs (Design Patents) filed between April 25, 1993 and April 24, 2003, it is unclear that these designs will be subject to renewal since they are now public domain. It is possible that when requesting the renewal, the MXPTO will deny the renewal and we will need to litigate the renewal at Court.
We are at your service should you have any questions.