a. Inventions:

i. Patents: Human creation which allows transforming matter or energy for human use and to satisfy specific needs. To be patentable, the inventions should be novel, the result of inventive activity and capable of industrial application.

ii. Supplementary Protection Certificates: Available to request if the prosecution period (calculated from the filing date to the notice of allowance notification) exceeds 5 years, once granted, it compensates for one day for each two days of unreasonable delay, counted from the original expiration date. The petition for the certificate must be filed simultaneously with the grant fee payment in a separate action.

iii. Utility Models: Objects, utensils, devices or tools that as result from a modification in their configuration, structure or form count with a different function from the individual parts. A utility model must be novel and have industrial application.

iv. Industrial Designs: Industrial designs (combination of figures, lines or colors incorporated into an industrial or artisanal product for ornamental purposes with distinctive and unique appearance) and industrial models (three-dimensional form which serves as a pattern for the manufacture of an industrial or artisanal product, giving a special appearance -not involving technical effects-). Industrial Designs must be novel and susceptible to industrial application.

v. Integrated Circuit Layouts Diagrams: Combination of elements or interconnections that are customary or common among creators of layout designs or manufacturers of integrated circuits could be registrable only if the combination is considered original.

b. Brands:

In Mexico, pursuant to the applicable legal framework, the principal types of trademarks recognized are as follows:

i. Trademarks: Trademarks are the primary form of brand protection worldwide, granting exclusive rights to owners over distinctive signs used to identify goods or services and preventing unauthorized use by third parties.

ii. Cause of action in passing off; Hallmarks and Traditional speciality guarantees (TSG): Mexico does not recognize these types of rights as such; rather, equivalent protection is primarily addressed through trademark rights, unfair competition provisions, and administrative infringement proceedings.

iii. Rights to prevent unfair competition: Many legal systems provide protection against unfair competition practices, including misleading advertising, unauthorized exploitation of another party’s reputation, and acts likely to create confusion among consumers.

iv. Collective marks: are used by organizations or groups to identify members, products, or services associated with a particular organization or association.

In Mexico, they are particularly useful for identifying products or services that share common characteristics, standards, or a particular origin, thereby allowing the members of the relevant group to benefit collectively from the reputation and recognition associated with the mark.

v. Certification marks: Certification marks identify goods or services that comply with specific standards, characteristics, quality requirements, geographic origin, or other criteria established by the certifying entity.

vi. Designations of origin: Designations of origin protect products whose qualities or reputation are essentially linked to a specific geographic area, where production, processing, or preparation takes place according to defined standards.

vii. Geographical indications: Geographical indications protect signs that identify goods as originating from a particular territory, where a given quality, reputation, or other characteristic is attributable to their geographical origin.

c. Other creations:

i. Copyright: Copyright protects original literary, artistic, musical, and other creative works, granting authors or rights holders exclusive rights to reproduce, distribute, communicate, and exploit their creations, subject to applicable limitations and exceptions.

ii. Design rights: Design rights protect the visual appearance and aesthetic features of products, including shapes, configurations, patterns, or ornamentation. Protection may arise through registration or, in certain jurisdictions, automatically upon creation or disclosure.

iii. Semiconductor topography rights: Semiconductor topography rights protect the original layout designs (topographies) of integrated circuits and semiconductor products, preventing unauthorized reproduction or commercial exploitation of the protected designs.

iv. Plant Varieties: Subdivision of a species comprising a group of individuals with similar characteristics that are considered stable and homogeneous. The plant variety must be novel, distinct, stable and homogeneous.

v. Trade secrets: any information of industrial or commercial application kept confidential by the person exercising legal control, which means obtaining or maintaining a competitive or economic advantage over third parties in economic activities and in respect of which he or she has adopted sufficient means or systems to preserve its confidentiality and restricted access to such information. The information of an industrial secret may be contained in documents, electronic or magnetic media or in any other physical medium. Information that is in the public domain shall not be considered an industrial secret.

Right	Duration	Procedures to extend the life term
Patent	20 years from the filing date	Supplementary protection certificate. If the prosecution period (from the filing date to the notice of allowance notification) exceeds 5 years due to unreasonable delays.
Supplementary protection certificate	5 years maximum	Non-extendable, takes effect after the original expiration date (20 years from the filing date).
Utility model	15 years from the filing date	Non-extendable *For cases granted before the Federal Law of Protection to the Industrial Property (FLLIP), which came in force on November 5th, 2020, the life period of this right was ten years, it is possible to extend its protection for 5 extra years by filing the maintenance payment within the six months prior the end of the original term of ten years.
Industrial design	25 years from the filing date	Non-extendable *For cases granted before a reform which entered into force on April 27th, 2018, the life period was 15 years, but it is possible to extend the protection to a maximum of 25 years in periods of 5 + 5 years by filing the renewal within the six months before the original expiration date.
Integrated circuit layouts-diagram	10 years from the filing date	Non-extendable
Plan variety	18 years perennial species from the grant date 15 years non-perennial species from the grant date	Non-extendable
Trade secrets	Indeterminated
Trademarks	10 years from the granting date	extendable for 10 years periods
Copyrights	The term of copyright protection in Mexico lasts for the life of the author plus 100 years after their death.	Non-extendable
Geographical Indications	Unlike trademarks, geographical indications generally do not have a fixed term of protection. In many jurisdictions, they remain protected indefinitely as long as the requirements for protection continue to be fulfilled and the geographical indication maintains its legally recognized status.	Non-extendable

The owners of inventions (Patents, Supplementary Protection Certificates, Designs, Utility Models, Integrated Circuit Layouts Diagrams) could be natural persons or legal persons.

The right to obtain any of the inventions mentioned belongs to the inventor, designer or creator and could belong to two or more people jointly. The provisions of the Federal Labor Law shall apply to inventions, utility models, industrial designs or layout designs of integrated circuits made by persons who are subject to an employment relationship in Mexico. If the employment relationship originates in a different jurisdiction, the provisions of the agreement that is exhibited for this purpose shall apply. People who work in educational institutions, public research centers or public entities that carry out scientific research, technological development or innovation activities, will also enjoy the benefits established in the applicable regulations.

The owner of Plant Variety is the breeder, who could be natural persons or legal persons. When a Plant Variety is developed and obtained by two or more natural or legal persons jointly, they must specify (at the filing application) the participation that corresponds to each one and designate a common representative, if it is not designated, the first one named in the application will be considered as such.

For marcTrade Secrets, the owner is the natural person or legal person who has legal control over the information. In the case of work, employment, business relationship a person has access to an industrial secret, must refrain from disclosing it without the authorization of the person with legal control. Any individual or legal entity that hires an employee who is currently working or has previously worked for another person, or a professional, adviser, or consultant who is currently providing or has previously provided services to another person, for the purpose of obtaining such other person’s trade secrets, shall be held liable under the FLLIP. Any individual or legal entity that obtains information constituting a trade secret by any unlawful means shall likewise be held liable.

In addition, the owners of trademarks, collective marks, certification marks, designations of origin, geographical indications,  also could be natural persons or legal persons.

However, the first owner of these rights generally depends on the nature of the right and the applicable law in Mexico.  Unlike copyright, design rights or patents, most rights relating to brands and geographical indications are not normally attributed to the individual who physically creates the sign or name. Rather, ownership or entitlement is generally connected with the undertaking, association, certifying body, producer group or other entity that uses, registers or is otherwise legally entitled to the relevant sign.

Copyright: As a general rule, the author is the original holder of the moral and economic rights in a work. Moral rights are personal to the author and are inalienable.

In the case of a commissioned work, unless otherwise agreed, the person or entity commissioning the work and remunerating its creation will hold the economic rights in accordance with the terms of the applicable agreement and the Federal Copyright Law.

Where a work is created as a consequence of an employment relationship established through a written individual employment agreement, and unless otherwise agreed, the economic rights are presumed to be shared equally between the employer and the employee. The employer may disclose the work without the employee’s authorization, but the employee may not do so without the employer’s authorization. In the absence of a written individual employment agreement, the economic rights belong to the employee.

Trademarks, collective marks and certification marks: Ownership or entitlement depends on the nature of the relevant sign and the applicable statutory requirements. In general, trademarks may be owned by natural or legal persons. Collective marks are owned by legally constituted associations or entities representing manufacturers, producers, traders or service providers, while certification marks are owned by the person or entity responsible for establishing and controlling the applicable certification standards.

Designations of origin and geographical indications: Mexican designations of origin and geographical indications are not privately owned intellectual property rights. Once protected, they are regarded as national assets and may only be used by persons or entities that obtain the corresponding authorization from the Mexican Institute of Industrial Property (IMPI) and comply with the applicable statutory requirements.

Patents, Supplementary Protection Certificates, Utility Models, Industrial Designs, Integrated Circuit Layout Designs, Plant Varieties, Trademarks, Collective Marks and Certification Marks are rights that require registration or the granting of a title by the competent authority in Mexico.

Designations of origin and geographical indications are protected through a declaration of protection issued by IMPI rather than through an ordinary private registration system. Their use by particular persons or entities requires a separate authorization from IMPI.

Copyright protection arises automatically upon creation of the work and registration before the National Copyright Institute (INDAUTOR) is voluntary and declarative rather than constitutive.

Trade secrets do not require registration. Protection arises provided that the information satisfies the statutory requirements for trade-secret protection, including confidentiality, commercial or industrial value, lawful control and the adoption of sufficient measures to preserve its confidentiality and restricted access.

Patents*, Designs, Utility Models, Integrated Circuit Layouts Diagrams: Natural or legal persons can apply for these rights, could be national or foreign.

The general process are as follows:

1. Filing of an application (before the Mexican Institute of Industrial Property -MIIP-)
2. Formal examination
3. Publication of applications in the corresponding Gazette
4. Substantive examination
5. Grant
6. Maintenance

*For patents it is possible to file a provisional application 12 months before the official application in order to recognize the provisional application filing date.

Supplementary Protection Certificates: this right should be requested by the current titleholder (natural or legal person) before the MIIP simultaneously with the grant fee payment.

The general process for this right is as follows. It is important to mention that these steps takes effect once the notice of allowance is issued and if the prosecution period (from the filing date to the notice of allowance notification) exceeds 5 years:

1. Filing of the request of Supplementary Protection Certificate simultaneously with the grant fee payment.
2. Examination of the request. If any formal requirement is not complied with, the MIIP would issue the corresponding requirement with an un-extendable term of 5 working days.
3. MIIP decision: rejection or acceptance. If the requirement is accepted, the MIIP would request the payment of the issuance of the certificate.
4. Certificate issuance.

Plant Varieties: Natural or legal persons can apply for this right, could be national or foreign.

The general process for this right is as follows:

1. Filing of the application (before the National Seed Inspection and Certification Service).
2. Formal and substantive examination.
3. Grant
4. Maintenance

Trademarks: Natural or legal persons can apply for these rights, whether national or foreign.

The general process is as follows:

1. Filing of an application before the Mexican Institute of Industrial Property (MIIP)
2. Formal examination
3. Publication of the application in the Industrial Property Gazette, allowing third parties to file oppositions
4. Substantive examination
5. Grant and issuance of the registration certificate
6. Maintenance and renewal

Copyright: Copyright protection arises automatically upon the creation of an original work and does not require registration.

However, natural or legal persons may voluntarily register works before the National Copyright Institute (INDAUTOR).

The general registration process is as follows:

1. Filing of an application before INDAUTOR.
2. Formal examination.
3. Examination of the application and supporting documentation.
4. Registration and issuance of the corresponding certificate.

Right(s)	Registration procedure duration
Patent, Utility model, Industrial design	Formal examination: 3 months Publication: 18 months after the issuance of the official communication regarding the formal requirements compliance – it is possible to require the anticipated publication Substantive examination/Grant: after the publication, the substantive examination is carried out, if an official action is issued, the titleholder could respond in the following two months (extendable for two additional months). The official actions are limited to only two. The MIIP should issue the notice of allowance or rejection notice not exceeding 12 months from the start of the substantive examination.
Supplementary protection certificate	There is no specified duration for this procedure, but once the MIIP issues the corresponding decision, the titleholder may effectuate the certificate payment within 1 month after its issuance. The MIIP takes around three months for issuance of the Letters Patents/certificates.
Integrated circuit layouts-diagram	Formal examination: 3 months Publication: 18 months after the issuance of the official communication regarding the formal requirements compliance – it is possible to require the anticipated publication Substantive examination/Grant: after the publication, the substantive examination is carried out, if an official action is issued, the titleholder could respond in the following two months (extendable for two additional months). The official actions are limited to only two. The MIIP should issue the notice of allowance or rejection notice not exceeding 12 months from the filing date or in which the formal requirements are fulfilled.
Plan variety	Once the novel, denomination and formal requirements are fulfilled, the National Seed Inspection and Certification Service in the next 120 natural days the official filing receipt; if any formal requirement is missing, the titleholder has three months to fulfill it. The registration of this right usually takes less than one year from its filing date.
Trademarks	The registration procedure before the Mexican Institute of Industrial Property (MIIP) usually takes approximately 4 to 6 months from the filing date until the issuance of the registration certificate, provided that no office actions, oppositions or other procedural issues arise. If the application receives an official action or an opposition is filed, the procedure may take longer depending on the complexity of the examination and the applicable response periods.
Copyright:	Since copyright protection arises automatically upon the creation of the work, there is no registration procedure required for protection purposes. However, voluntary registration before the National Copyright Institute (INDAUTOR) usually takes approximately 15 to 30 business days, provided that the application and supporting documentation are complete and no objections are raised.

For Patents, Designs, Utility Models, Integrated Circuit Layouts Diagrams, after the publication of the application, there is a two-month period for third-party observations. In the same line, if any invention is granted in the name to the wrong owner, it is possible to claim the ownership in any time of its life term.

In the case of Trademarks, yes, third parties may participate in the registration process through the opposition procedure before the MIIP. Once a trade mark application is published in the Industrial Property Gazette, there is one month period to which any third party may file observations or an opposition within the applicable term, based on prior rights or legal grounds that may prevent the registration of the mark. The MIIP will consider the arguments and evidence submitted by the opposing party during the examination of the application; however, the opposition does not automatically prevent the registration of the mark.

However, in Copyrights, no, since copyright protection arises automatically upon the creation of an original work and registration before the National Copyright Institute (INDAUTOR) is voluntary and declarative, Mexican copyright law does not provide for a third-party opposition procedure during the registration process. Nevertheless, third parties may challenge or dispute the validity or ownership of a registered work through the applicable administrative or judicial proceedings

Unfavourable decisions issued by administrative authorities may be challenged through an administrative review recourse, which is an internal administrative remedy whereby the affected party requests that the decision be reviewed by the hierarchical superior of the authority that issued the challenged decision. The reviewing authority is empowered to examine the legality and, where applicable, the merits of the contested decision and may confirm, modify, or revoke it, in accordance with the applicable legal framework. It is important to note that this administrative recourse is optional and, therefore, the affected party may elect not to pursue it and instead seek judicial review of the administrative decision.

Alternatively, the affected party may directly challenge the administrative decision through a nullity claim before the Federal Court for Administrative Affairs (Tribunal Federal de Justicia Administrativa, “FCAA”). Through this proceeding, the claimant may seek the invalidation of the challenged administrative decision on the grounds that it was issued in violation of applicable legal provisions, procedural requirements, or other rules governing the authority’s exercise of its powers. The FCAA will review the challenged decision and issue a judgment determining whether the administrative act should remain in force or be invalid, in whole or in part, as applicable.

If the FCAA issues an unfavourable decision, the affected party may challenge such judgment, subject to the applicable procedural requirements, through an amparo appeal before the competent Federal Circuit Courts (“FCC”). The amparo proceeding provides for judicial review of the FCAA’s judgment, particularly with respect to potential violations of constitutional rights and applicable legal provisions. The FCC will therefore assess the arguments raised by the claimant and determine whether the judgment issued by the FCAA should be upheld, modified, or set aside.

Finally, if the FCC issues an unfavourable decision, the affected party may, in certain circumstances, file a review recourse before the Supreme Court of Justice (Suprema Corte de Justicia “SCJ”). This review is not available as a matter of right in every case and is subject to the constitutional and statutory requirements governing the SCJ’s jurisdiction. Accordingly, the SCJ may analyze the matter only where the applicable requirements for constitutional review and the exercise of its appellate jurisdiction are satisfied.

Accordingly, the available remedies generally allow an affected party to pursue a progressively judicialized review of an unfavourable administrative decision: first, through an optional internal administrative review; second, directly before the FCAA through a nullity claim; thereafter, before the FCC through an amparo appeal; and, where the applicable constitutional and statutory requirements are met, ultimately before the SCJ through a review recourse.

Maintenance of Mexican Patents, Utility Models, Designs under old law provisions (granted before April 27th, 2018), and Integrated Circuit Layouts Diagrams has the following particulars according to our Legislation:

• The first maintenance payment should be effected together with the payment of the grant fees, namely, once the Mexican patent office issues the Notice of Allowance of each case. The maintenance payment that should be effected would be from the grant year + 4 subsequent years (a quinquennium). This action should be done by the agent on record.
• The subsequent maintenance payments should be effected in quinquenniums within the anniversary month of the filing/international filing date of the invention without incurring in any late fees, namely, every five years.

The official fees for each right are as follows:

Patents:           From 1st to 5th (per annuity)                  $1, 347.80 MXN

From 6th to 10th (per annuity)                $1,578.40 MXN

From 11th onwards (per annuity)            $1,782.91 MXN

 

Utility Models: From 1st to 3rd (per annuity)                  $1,275.29 MXN

From 4th to 6th (per annuity)                  $1,302.48 MXN

From 7th onwards (per annuity)              $1,496.82 MXN

 

Designs:          From 1st to 9th (per annuity)                  $1,284.35 MXN

From 10th to 15th (per annuity)              $1,375.01 MXN

Integrated Circuit Layouts Diagram:

From 1st to 3rd (per annuity)                  $1,275.29 MXN

From 4th to 6th (per annuity)                  $1,302.48 MXN

From 7th onwards (per annuity)              $1,496.82 MXN

For Supplementary Protection Certificates there is no maintenance payment, but its validity depends on the payment of the annuities during the original expiration date (20 years from the filing date).

Regarding the Designs under the new law provisions (filed on or after April 27th, 2018) it is important to point out the following:

• The first renewal should be effected together with the payment of the grant fees (once the MIIP issues the Notice of Allowance). The renewal payment that should be effected would be from the filing date year + 4 subsequent years.
• The subsequent renewals should be carried out by the agent on record and could be effected within the six months before the expiration of the last five years paid.
• The official fee for each renewal is of $6,875.03 MXN

On the other hand, for Plant Varieties, the maintenance payments have to be effected annually in the anniversary month of its grant date by the agent on record. The official fee for each renewal is of $4,904.00 MXN

Trademarks: The official fees are established by the MIIP pursuant to the applicable Fee Schedule (Tarifa por los servicios que presta el Instituto Mexicano de la Propiedad Industrial).

The current official fees are approximately as follows:

• Trademark application: MXN $2,695.18 plus VAT (16%), resulting in a total of approximately MXN $3,126.41 per class of goods or services. When the application is filed through the online system (Marca en Línea), a 10% discount applies to the official fee.
• Trade mark renewal: MXN $2,628.14 plus VAT per class of goods or services.

In accordance with the Federal Law for the Protection of Industrial Property, a trademark renewal application must include a Declaration of Actual and Effective Use, identifying the specific goods or services for which the mark has been used in Mexico, together with payment of the corresponding official fee.

If the Declaration of Use is omitted from the renewal application, IMPI will issue an official requirement granting the applicant a two-month period to remedy the omission. If the applicant fails to comply with the requirement within that period, the registration will lapse by operation of law.

Additional costs may apply in connection with official actions, oppositions, recordals or other related proceedings.However, the official fee for filing the Declaration of Use is MXN $1,048.81 plus VAT per registration.

Additionally, when filing a trademark renewal application, the owner must submit the corresponding Declaration of Actual and Effective Use when required by law. If the declaration is omitted, IMPI will issue an official requirement granting the applicant two months to remedy the omission. Failure to comply with that requirement within the prescribed period will result in the registration lapsing by operation of law.

Copyright: Copyright protection arises automatically upon the creation of an original work; therefore, registration before the National Copyright Institute (INDAUTOR) is voluntary and does not constitute the right itself.

The current official fee for the voluntary registration of a literary or artistic work before INDAUTOR is approximately MXN $367.00 per work. Additional fees may apply for specific procedures, such as registration of contracts, certified copies, amendments or other recordal matters.

Copyright registrations do not require renewal or maintenance fees. The protection term is determined by the Federal Copyright Law, and the rights remain protected for the statutory period without the need for periodic payments.

For Patents, Designs, Utility Models and Integrated Circuit Layouts Diagrams, if the maintenance payment is not effectuated before or on the original due date, there is a six-month grace period to proceed with the payment with surcharges. It is important to mention that the surcharge fee is not a fixed fee, since it varies depending on: total amount to be paid, number of months between the original due date and the payment date, and the National Consumer Price Index (INPC).

Moreover, if any of above-mentioned inventions has lapsed by failure to pay the fees corresponding to the annuities within the six-month grace period, might be reinstated within the six months after the term of the grace period if the right holder requests such reinstatement of the right. This action has a due date on the anniversary of the original due date. For this action, it will be necessary to attend the maintenance payment with surcharges joint with the corresponding reinstatement official fees in a writ requiring the reinstatement petition.

For Plant Varieties if an annuity payment is not effectuated, it could be attended during the following year without surcharges. There are no surcharges for late payment.

Trademarks: Failure to pay the renewal fees within the applicable term results in the lapse and expiration of the trade mark registration, and the exclusive rights granted by the registration are lost.

Under Mexican law, a trade mark owner may file a renewal application within the applicable renewal period, which includes the six-month period prior to the expiration date and the six-month grace period following the expiration date. If the renewal is not filed within such period, the registration will expire and cannot be restored. In such cases, the owner would need to file a new trade mark application, which would be subject to a new examination process and possible objections based on intervening third-party rights.

Additionally, when renewing a trade mark registration, the owner must submit the corresponding Declaration of Use of the Trade Mark when required by law. Failure to submit such declaration results in the cancellation of the registration.

Copyright: Copyright registrations before the National Copyright Institute (INDAUTOR) do not require renewal fees or maintenance payments, as copyright protection arises automatically upon creation of the work and registration is voluntary and declarative.

Therefore, failure to pay renewal fees does not result in the loss of copyright protection. However, certain related rights, such as Reservations of Rights to Exclusive Use (Reservas de Derechos al Uso Exclusivo), require periodic renewal payments. Failure to renew a Reservation of Rights within the applicable term results in the expiration of the reservation, and the holder must file a new application if protection is still required.

For Patents, Designs, Utility Models, Integrated Circuit Layouts Diagrams the rights may be transferred in whole or partially in terms and according to the formalities established by the common Legislation. The assignment could be filed in a sole action regardless if it involves one or more cases, subject to the condition that both parties are the same (registered titleholder and future titleholder). It is important to mention that the payment of the official fee to assign ownership is payable per case.

When filing the recordal of the assignment to a new owner, our Legislation requires us to demonstrate the legal authority to act on behalf of the mentioned owner, which must be done by submitting a power of attorney and paying the corresponding legal representation fee. Moreover, it is necessary to file an assignment agreement signed by both parties, expressly identifying the application numbers or grant numbers. If a wet-ink signed document is filed, it would not need any legalization; but for documents executed with electronic signatures must be notarized and apostilled. It is important to consider that a complete Spanish translation of the document must be filed if the original document is in a different language.

The Supplementary Protection Certificate shall confer the same rights as the patent from which is derived and is subject to the same limitations and obligations. Therefore, if in a Patent an assignment is recorded, it would apply to this right.

For Plant Varieties the rights may be transferred in whole or partially. Our Legislation requires us to demonstrate the legal authority to act on behalf of the mentioned owner, which must be done by submitting a power of attorney and paying the corresponding legal representation fee. Moreover, it is necessary to file an assignment agreement signed by both parties, expressly identifying the Plant Varieties involved, the assignment should be notarized and legalized by apostille.  It is important to consider that a complete Spanish translation of the document must be filed if the original document is in a different language.

Trademarks: Trademark rights and pending trademark applications may be assigned in whole or in part in accordance with the formalities established under Mexican law. The assignment should be documented in writing and recorded before IMPI in order to produce effects against third parties.

Where two or more registrations or pending applications belonging to the same owner are considered legally linked under the applicable statutory provisions, their transfer may be subject to the specific requirements established by the Federal Law for the Protection of Industrial Property.

Collective marks: Collective marks may not be licensed or transferred to third parties. Their use is reserved to the members of the association or entity that owns the collective mark, in accordance with the applicable rules governing its use.

Certification marks:  Certification marks are subject to specific statutory rules reflecting their certification function. Their use by third parties is not based on an ordinary trademark licence; rather, the owner authorizes use by persons whose goods or services comply with the standards and requirements established in the applicable rules of use. Any change affecting ownership or control of the certification mark must comply with the requirements established by Mexican law and must preserve the independent certification function of the mark.

Designations of origin and Geographical indications: Mexican designations of origin and geographical indications are national assets and are not privately owned rights capable of assignment.

However, the right granted to an authorized user to use a protected designation of origin or geographical indication may be transferred in accordance with Mexican law. The transfer must be recorded before IMPI in order to produce effects against third parties, and the new user must demonstrate that it satisfies the statutory conditions and requirements necessary to obtain authorization to use the protected designation or indication.

Copyright: The holder of economic rights may transfer those rights in Mexico, provided that the transfer is made in writing. Any transfer of economic rights must be onerous and temporary and must provide, in favour of the author or the relevant economic-rights holder, either a proportional participation in the income derived from exploitation of the work or a fixed and determined remuneration.

The agreement should clearly identify the economic rights being transferred, the applicable term and the relevant conditions of exploitation. In the absence of an express term, the statutory rules governing the duration of transfers apply.

Moral rights remain personal to the author and cannot be assigned.

Agreements transferring economic rights must be recorded before the Public Copyright Registry of INDAUTOR in order to produce effects against third parties.

For Patents, Designs, Utility Models, Integrated Circuit Layouts Diagrams and Plant Varieties it is not required to record the assignment before the corresponding authority; but it is highly recommended.

Although an assignment is valid and binding between the assignor and the assignee upon its execution, it must be recorded with MIIP / National Seed Inspection and Certification Service, respectively to be enforceable against third parties. Accordingly, failure to record the assignment does not invalidate the transfer of ownership between the parties; however, the assignee may not assert its ownership rights against third parties until the assignment has been duly recorded before MIIP / National Seed Inspection and Certification Service.

For this reason, it is strongly recommended that assignments be recorded promptly to provide legal certainty, establish the assignee’s ownership in the official records, and ensure full enforceability of the transferred rights against third parties.

In addition, in Mexico, assignments of trademarks, collective marks and, where legally permitted, certification marks should be recorded before the Mexican Institute of Industrial Property (MIIP) in order to be effective against third parties. Failure to record the assignment does not necessarily invalidate the agreement between the parties, but the transfer may not be enforceable against third parties and the assignee may face difficulties in exercising the rights arising from the registration.

Designations of origin and geographical indications: The protected designation or geographical indication itself is not subject to private assignment. However, an authorized user may transfer its right to use the protected designation or indication, provided that the transferee satisfies the applicable statutory requirements. The transfer must be recorded before IMPI in order to produce effects against third parties and takes effect as such from the date of its recordal.

Copyrights: There is no requirement to register an assignment of copyright for the assignment to be valid between the parties. However, the assignment may be recorded before the National Copyright Institute (INDAUTOR). Registration provides legal certainty and allows the assignment to have effect against third parties. Accordingly, failure to record the assignment does not invalidate the agreement between the parties, but may affect its enforceability against third parties and the ability of the assignee to rely on the recorded chain of title.

For Patents, Designs, Utility Models, Integrated Circuit Layouts Diagrams the rights may be licensed for their exploitation. The titleholder or the licensee could register the license before the MIIP; the license of two or more pending applications or granted inventions could be filed in a sole action, when the licensor and the licensee are equal in all. The payment of the official fee for this action is for case.

When filing the license application, it would be necessary to file the original license documents or a certified copy in which the license, authorization for use or franchise is established. This document should be signed in wet-ink, if it is electronically signed, it would be necessary to to file it apostilled. Moreover, in order to prove the faculties to act on behalf of the titleholder or the licensee it is necessary to be registered as an attorney on record. It is important to consider that a complete Spanish translation of the document must be filed if the original document is in a different language.

For Plant Varieties, the breeder could license the utilization and exploitation (exclusive, total or partial) and in a determined period of time of its life term

The process is similar to inventions, but it should be carried out before the National Seed Inspection and Certification Service.

Trademarks: The owner may license a third party to use a trade mark for all or part of the goods or services covered by the registration. The licence should be granted in writing and should establish the applicable terms and conditions of use. The licence must be recorded before the Mexican Institute of Industrial Property (MIIP) to be effective against third parties.

Collective marks: Collective marks may only be used by members of the association or organization that owns the mark, in accordance with the rules governing its use. Accordingly, they are not freely licensable to third parties outside the relevant organization.

Certification marks: Certification marks are not subject to ordinary trademark licensing. The owner may authorize third parties to use the certification mark where their goods or services comply with the standards, characteristics and other requirements established in the applicable rules of use. The owner remains responsible for administering the certification system and controlling compliance with those requirements.

Designations of origin and Geographical indications: Designations of origin and geographical indications are not privately licensed in the same manner as ordinary trademarks. Their use requires authorization from IMPI and is limited to persons or entities that satisfy the statutory requirements and the conditions established in the relevant declaration of protection.

An authorized user may, however, enter into an agreement permitting distributors or sellers of its products to use the protected designation of origin or geographical indication. Such agreement must be recorded before IMPI in order to produce effects against third parties and must comply with the conditions established by law.

Copyright: The holder of economic rights may grant exclusive or non-exclusive licences to third parties. Copyright licences must be made in writing and should clearly identify the rights being licensed, the scope of authorized exploitation, the applicable term, territory, remuneration and any other relevant conditions.

Moral rights cannot be licensed or transferred and remain with the author.

For Patents, Designs, Utility Models, Integrated Circuit Layouts Diagrams and Plant Varieties it is not required to record the license before the corresponding authority; but it is highly recommended.

However, for a license to be enforceable against third parties, it must be recorded with MIIP / National Seed Inspection and Certification Service, respectively. Failure to record the license does not invalidate the agreement, but it prevents the parties from asserting the licensed rights against third parties to the extent that such enforceability depends on the existence of a recorded license. Accordingly, recording is strongly recommended to ensure legal certainty and the full effectiveness of the license against third parties.

Nevertheless, in Mexico, licences to use trademarks should be recorded before the Mexican Institute of Industrial Property (MIIP) in order to be effective against third parties. Failure to record the licence does not necessarily invalidate the agreement between the parties, but it may prevent the licensee from relying on the licence against third parties.

Collective and certification marks are subject to specific statutory rules governing their use and control. Accordingly, their use is not based solely on an ordinary private licence, and the applicable rules and, where required, the relevant information or instruments must be recorded or filed before MIIP.

Designations of origin and geographical indications: The designation of origin or geographical indication itself is not subject to an ordinary private licence. Its use requires an authorization granted by IMPI.

The right of an authorized user may be transferred to another qualifying user, subject to recordal before IMPI. In addition, an authorized user may enter into an agreement allowing distributors or sellers of its products to use the protected designation or indication. Such agreements must also be recorded before IMPI in order to produce effects against third parties.

Copyright: There is no requirement to register a licence of copyright for it to be valid between the parties. However, a licence may be recorded before the National Copyright Institute (INDAUTOR), particularly for purposes of legal certainty and enforceability against third parties. Failure to record the licence does not invalidate the agreement between the licensor and the licensee, but the licence may not be enforceable against third parties.

The distinction between exclusive and non-exclusive licences does not, by itself, determine whether a licensee has standing to enforce the licensed right in Mexico. The applicable statutory provisions and the terms of the licence agreement must be considered.

For patents, utility models, industrial designs and integrated circuit layout designs, a licensee may, unless otherwise agreed, exercise the legal actions available to protect the licensed right as if it were the owner.

A similar rule applies to trademarks. Unless the licence agreement provides otherwise, a trademark licensee may exercise the legal actions available for protection of the mark as if it were the registered owner.

Accordingly, the licence agreement may contractually limit or reserve enforcement rights to the owner. For this reason, the enforcement provisions of the licence agreement should be reviewed carefully regardless of whether the licence is exclusive or non-exclusive.

Copyright licences may also be exclusive or non-exclusive. The licensee’s ability to enforce the licensed rights will depend on the nature and scope of the licence, the rights expressly granted and the applicable provisions of the Federal Copyright Law.

Yes. Criminal sanctions apply to conducts expressly classified by law as a criminal offence.

Industrial property.

The Federal Law for the Protection of Industrial Property (Ley Federal de Protección a la Propiedad Industrial, “LFPPI”) criminalises trademark counterfeiting for purposes of commercial speculation; specified commercial dealings in goods bearing counterfeit marks, including the knowing supply of inputs intended for their production; specified forms of unlawful acquisition, disclosure or use of trade secrets; and the commercial production, storage, transportation, distribution or sale of Mexican-origin goods bearing a protected appellation of origin or geographical indication without the required certification.

Trademark-counterfeiting offences and offences involving protected appellations of origin or geographical indications are punishable by three to ten years’ imprisonment and fines of approximately US$13,600 to US$3.41 million. Trade-secret offences are punishable by two to six years’ imprisonment and fines of approximately US$6,800 to US$2.04 million.

The intentional sale of goods bearing counterfeit marks to final consumers in streets or public places, for purposes of commercial speculation, is punishable by two to six years’ imprisonment and fines of approximately US$6,800 to US$681,300. If the sale is conducted from a commercial establishment or in an organised or permanent manner, the penalty increases to three to ten years’ imprisonment and fines of approximately US$13,600 to US$1.70 million.

Copyright and related rights.

The Federal Criminal Code (Código Penal Federal, “CPF”) criminalises, among other conduct, knowingly producing copies in excess of the number authorised; wilfully using protected works for profit without authorisation; commercial speculation in free textbooks; specified commercial acts involving unauthorised copies of works, phonograms, videograms or books; unauthorised recording or transmission of films exhibited in cinemas; unauthorised exploitation for profit of performances; specified acts involving encrypted programme-carrying signals; publication of a work under another person’s name; circumvention of effective technological protection measures; dealings in circumvention devices, components or services; and specified interference with rights-management information.

Depending on the offence, penalties range from six months to ten years’ imprisonment and from 300 to 30,000 fine-days. These penalties are without prejudice to reparation of damage, which may not be lower than 40% of the public sale price of each infringing product or service.

How the offences are pursued.

For industrial-property offences, trademark counterfeiting, commercial dealings in counterfeit goods or inputs intended for their production, and trade-secret offences may only be pursued following a formal complaint by the victim or offended party. By contrast, offences involving protected appellations of origin or geographical indications, as well as the sale of counterfeit goods to final consumers in streets or public places, may be pursued by the authorities without such a formal complaint.

Copyright and related-rights offences may be pursued by the authorities without requiring a formal complaint by the victim or offended party. However, a formal complaint is specifically required for: (i) knowingly producing more copies of a protected work than authorised by the rights holder; (ii) recording, transmitting or making a total or partial copy of a protected cinematographic work exhibited in a cinema or similar venue without authorisation; and (iii) knowingly publishing a work by substituting the author’s name with another name.

In practice, however, criminal proceedings involving intellectual-property offences are commonly initiated after the interested rights holder brings the alleged conduct to the attention of the competent authorities.

The available enforcement mechanisms depend on the right asserted and may involve administrative authorities, judicial authorities.

Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial, MIIP).

Patents and supplementary certificates, utility models, industrial designs, integrated-circuit layout designs, trademarks, collective and certification marks, commercial names, commercial slogans, appellations of origin, geographical indications, trade secrets and industrial-property-related unfair competition may be enforced through administrative infringement proceedings before MIIP.

National Copyright Institute (Instituto Nacional del Derecho de Autor, “INDAUTOR”).

Copyright and related rights may be enforced through administrative proceedings before INDAUTOR. In matters of commerce, MIIP adjudicates copyright-related infringements.

Ministry of Agriculture and Rural Development (Secretaría de Agricultura y Desarrollo Rural, “SADER”).

SADER conducts administrative proceedings and imposes fines for infringements of plant breeders’ rights. It may address unauthorised production, distribution, sale or other commercial exploitation of a protected variety or its propagation material, as well as false ownership claims, unauthorised changes to the registered denomination, misrepresentation of origin, obstruction of verification visits and failure to comply with provisional injunctions. The parties may also submit damages or other disputes within SADER’s competence to a SADER arbitral commission.

Damages.

An affected industrial-property right holder may seek compensation for damages resulting from infringement. In practice, rights holders commonly first pursue an administrative infringement proceeding before MIIP in order to obtain an enforceable finding of infringement and subsequently seek damages before the competent civil or commercial courts.

The LFPPI also allows the right holder to bring a damages claim directly before the competent court without first obtaining an administrative declaration of infringement from MIIP, subject to the applicable marking requirement. Alternatively, once MIIP has issued an enforceable infringement decision, the right holder may seek the determination and quantification of damages through the mechanism contemplated by the LFPPI before MIIP.

In either case, compensation may not be lower than 40% of the legitimate value indicator selected and demonstrated by the affected right holder. The relevant indicator may be based, among other factors, on the market or retail value of the infringing products or services, the profits lost by the right holder, the profits obtained by the infringer, or the royalty that the infringer would have paid for a licence to use the infringed right.

Judicial jurisdiction.

Federal courts generally have jurisdiction over civil and commercial disputes arising under the LFPPI, although the claimant may elect to proceed before a competent local court where only private interests are affected. Criminal intellectual-property matters are exclusively federal and are prosecuted before the competent federal criminal courts.

Mexican law does not establish a mandatory overall duration or a fixed total cost for an intellectual-property dispute. In practice, the duration varies depending on the type of proceeding and the complexity of the matter.

Administrative proceedings.
Administrative declaration proceedings for invalidation, cancellation and non-use cancellation before the MIIP regarding trademarks generally take approximately one to two years; in the case of patents, these proceedings may take approximately two to four years. Infringement proceedings before the MIIP generally take approximately one to two years.

Proceedings regarding copyrights and plant varieties also generally take approximately one to two years.

Administrative litigation stage.
A challenge before the FCAA against a decision issued by an administrative authority generally takes approximately eight months to one year.

Judicial appeal stage.
Subsequent proceedings before the federal judicial courts generally take approximately six to eight months to be resolved and obtain a final ruling.

Please note that, at all stages, these timeframes may vary depending on the complexity of each case, as well as on further actions within the proceeding, such as notification procedures involving the parties, the nature and volume of the evidence, expert witness opinions, inspections, incidental proceedings and the procedural conduct of the parties.

Costs.

Official filing fees are payable when administrative proceedings are commenced before MIIP, INDAUTOR or SADER, in accordance with the applicable fee schedule.

By contrast, proceedings before the FCAA and subsequent proceedings before the federal judicial courts are not subject to official filing fees. Each party must nevertheless bear its own legal fees and related expenses, including expert fees, translations, inspections, evidence-preservation work, notarisation or certification costs and any bond required for provisional injunctions. The total cost therefore depends primarily on the complexity of the dispute and the nature, volume and technical content of the evidence required.

The competent authority, procedure, timeframe and available review depend on the intellectual-property right asserted and the relief sought.

Administrative proceedings before the specialised authorities.
MIIP has jurisdiction over administrative declaration proceedings concerning industrial-property rights, including infringement, invalidation, cancellation and non-use cancellation actions. MIIP also resolves copyright-related infringement proceedings involving matters of commerce. INDAUTOR has jurisdiction over administrative copyright infringements and proceedings concerning copyright registrations, annotations and records, while SADER hears administrative proceedings involving plant breeders’ rights.

These proceedings generally begin with a written petition identifying the parties, the relevant facts, legal grounds, relief sought and supporting evidence. Once the petition is admitted, the authority serves the respondent, who may file a defence and submit evidence. The proceeding may subsequently include expert evidence, inspections, evidentiary submissions and closing arguments before the authority issues its written decision.

Administrative declaration proceedings for invalidation, cancellation and non-use cancellation before MIIP regarding trademarks generally take approximately one to two years; in the case of patents, these proceedings may take approximately two to four years. Infringement proceedings before MIIP generally take approximately one to two years. Proceedings regarding copyrights and plant varieties also generally take approximately one to two years. These timeframes may vary depending on the complexity of each case, as well as on service and notification procedures involving the parties, the nature and volume of the evidence, expert opinions, inspections, incidental proceedings and the procedural conduct of the parties.

Appeals.
As explained in Question 8, an unfavourable administrative decision may also be challenged through an optional administrative review recourse. Alternatively, the affected party may challenge the decision directly before the FCAA. An appeal before the FCAA against a decision issued by an administrative authority generally takes approximately eight months to one year.

An unfavourable FCAA ruling may subsequently be challenged through an amparo appeal before the FCC. In exceptional cases, an unfavourable FCC ruling may be subject to a review appeal before the SCJ, provided that the applicable constitutional and statutory requirements are satisfied. Subsequent proceedings before the federal judicial courts generally take approximately six to eight months to be resolved and obtain a final ruling.

These timeframes may vary depending on the complexity of the matter and any subsequent review.

Civil and commercial proceedings.
Local courts may hear civil and commercial claims arising from industrial-property and copyright matters. Proceedings begin with a written claim identifying the parties, material facts, legal grounds, relief sought and available evidence. The defendant is then served and may submit a defence and any applicable counterclaim. The case subsequently proceeds through the evidentiary stages, hearings or written submissions required under the applicable procedural legislation, followed by a final judgment.

An affected industrial-property right holder may bring a direct claim for damages without first obtaining an MIIP declaration of infringement, subject to the applicable marking requirement. In practice, however, right holders commonly first obtain an enforceable infringement decision from MIIP and subsequently pursue damages before the competent civil or commercial court.

Their duration depends primarily on service, the nature and technical complexity of the evidence, expert opinions, interlocutory matters and any subsequent review. Provisional injunctions may be requested before final judgment, ordinarily subject to a bond, and final relief is awarded in the judgment.

Criminal proceedings.
Criminal intellectual-property matters fall exclusively within federal jurisdiction. Proceedings begin with an investigation conducted by the Office of the Attorney General of the Republic (Fiscalía General de la República, “FGR”) and, where the applicable requirements are satisfied, continue before the competent federal criminal courts.

To obtain a border suspension, the applicant must establish prima facie ownership of the asserted right and show an actual or imminent infringement, irreparable harm or a substantiated risk that evidence may be destroyed, concealed, lost or altered. The applicant must also post the bond fixed by the competent authority.

Once the suspension order is notified, the customs authority must retain the foreign-origin goods and place them at the disposal of the authority that issued the order. The order must identify the importer, the goods, the relevant customs office, the designated warehouse and the depositary with sufficient precision.

If the suspension is executed before the infringement proceeding is commenced, the applicant must file the corresponding administrative infringement action or judicial proceeding within 20 working days; otherwise, the suspension may be lifted and the applicant may be liable for any resulting harm.

These border measures are also available in copyright matters, where MIIP and the competent federal courts may order the suspension of the free circulation of foreign-origin goods.

ANAM trademark database.

In addition, the National Customs Agency of Mexico (Agencia Nacional de Aduanas de México, “ANAM”) maintains a trademark database known as the Base Marcaria. Trademark owners may record their registrations, detailed characteristics and images of genuine goods, tariff classification and authorised importers, licensees or distributors. Recordal does not itself suspend the circulation of goods, but it assists ANAM in identifying possible irregularities and notifying the relevant trademark owner or its legal representative so that appropriate enforcement action may be assessed.

Dispute-resolution mechanisms are not mandatory in Mexican intellectual-property disputes. However, the applicable laws provide for optional dispute-resolution mechanisms, as described in the response below.

Settlement and alternative dispute-resolution mechanisms are voluntary in Mexican intellectual-property disputes.

Private settlement.

The parties may enter into a settlement agreement providing for cessation or limitation of use, monetary payments, releases, assignments, licences or coexistence arrangements, subject to public policy, third-party rights and any recordal needed for effects against third parties.

MIIP conciliation.

Either party to an administrative infringement proceeding may request conciliation before MIIP issues its decision. Conciliation does not suspend the proceeding. A formalised agreement terminates the proceeding, has res judicata effect and is enforceable.

INDAUTOR mechanisms.

INDAUTOR offers settlement conferences, mediation, conciliation and arbitration for copyright and related-rights disputes. Arbitration requires a valid written arbitration clause or submission agreement.

SADER arbitration.

Plant-variety disputes may be submitted to a SADER arbitral commission, which may act as an amiable compositeur or decide according to law, as agreed by the parties.

The claimant must prove the elements of the specific infringement and support them with admissible evidence. The principal requirements depend on the right asserted.

Patents, utility models, industrial designs and layout designs.

The claimant must establish a valid and enforceable right, standing to enforce it and unauthorised conduct falling within the protected claims or registration. For industrial designs, the accused product must incorporate the registered design or a substantial copy. For integrated-circuit layout designs, the conduct must fall within the exclusive acts reserved to the right holder.

Relevant evidence commonly includes the title and chain of ownership, granted claims or registered representations, samples or inspection records of the accused product or process, sales and import records, and technical or expert comparisons. For a process patent, the evidentiary burden may shift to the alleged infringer where the resulting product is new or there is a significant likelihood that the patented process was used and the owner could not determine the process despite reasonable efforts.

Trademarks, other distinctive signs and unfair competition.

The claimant must establish the protected right or other legally recognised entitlement, the defendant’s commercial conduct and the applicable infringement. This commonly requires proof of unauthorised use of an identical or confusingly similar sign for identical or similar goods or services, or proof of confusion, deception or other unfair-competition conduct.

For appellations of origin, geographical indications and certification marks, the claimant must also establish the applicable declaration, authorisation, certification or rules of use and the defendant’s unauthorised or non-compliant use. Typical evidence includes registrations or publications, labels, packaging, advertising, websites, marketplace purchases, invoices, customs documents and inspection records.

Trade secrets.

The claimant must prove that the information is confidential, has industrial or commercial application and actual or potential competitive value, is under the claimant’s lawful control and has been subject to sufficient measures to preserve confidentiality and restricted access. The claimant must also prove unlawful acquisition, disclosure or use. Relevant evidence may include confidentiality agreements, access controls, employment or contractual records, forensic evidence and proof of access or use.

Copyright and databases.

For copyright infringement, the claimant must establish an original work fixed in a material medium, ownership of or standing to enforce the relevant patrimonial rights and an unauthorised act such as reproduction, distribution, public communication or transformation. Registration is declarative rather than constitutive.

For an original database, protection covers the original selection or arrangement but not the underlying data. For a non-original database, the claimant must establish the maker’s status, the date of creation, the five-year term and unauthorised use.

Plant varieties.

The claimant must establish a valid breeder’s title and unauthorised production, distribution, sale or other covered commercial exploitation of the protected variety or its propagation material, subject to the statutory exceptions. Relevant evidence may include the title, plant material, transaction records, labels and appropriate technical or genetic testing.

MIIP, INDAUTOR and SADER base their resolutions exclusively on the evidence specifically offered by the parties and admitted in the relevant proceeding. The parties must identify and submit the documents, expert opinions, inspection requests, electronic evidence and other evidentiary material on which they intend to rely within the applicable procedural periods.

The administrative authority does not ordinarily conduct an independent investigation or obtain evidence that has not been offered by the parties. Physical or digital inspections, technical assessments and requests for the production of specifically identified information are therefore generally conducted only where the corresponding evidence has been duly offered and admitted. Confidential information and trade secrets submitted in the proceeding must remain protected.

Judicial courts likewise assess the evidence specifically offered by the parties and admitted under the applicable procedural rules. Specialised factual or technical matters are ordinarily established through party-appointed experts, documentary and electronic evidence, judicial inspections and other evidence requested in the parties’ pleadings.

Each party may appoint an expert in the relevant science, art, technique, trade or industry. Where the expert opinions are materially contradictory and do not provide a sufficient basis for the decision, a third expert may be appointed to resolve the disagreement and preserve procedural equality between the parties.

According with the above, please note that Mexico does not provide broad US-style discovery. Each party is responsible for identifying, offering and producing the evidence supporting its claims or defences. An authority may order the production of specifically identified documents, records or objects from a party or third person only where such evidence has been properly requested within the proceeding and the applicable procedural requirements are satisfied. Failure to comply with an evidentiary order may result in procedural sanctions or adverse inferences.

As mentioned in previous point, the authorities assess the evidence specifically offered by the parties and admitted within the applicable procedural periods. Evidence is generally scrutinised through written objections, closing arguments, documentary and technical comparisons, inspections, opposing expert opinions and challenges concerning authenticity, reliability or probative value.

Testimonial and confessional evidence may be restricted depending on the applicable procedure. Where the parties submit materially conflicting expert opinions and those opinions do not provide a sufficient basis for decision, the competent authority may appoint or recognise a third expert to resolve the disagreement and preserve procedural equality.

General defences include non-infringement; lack of legal standing or ownership; absence, expiry or unenforceability of the asserted right; consent or licence; exhaustion; and, where applicable, invalidation, non-use cancellation or cancellation.

Additionally in a direct damages action, the defendant may assert a counterclaim challenging the validity or continued effect of the asserted right. The corresponding invalidation, non-use cancellation or cancellation action must be pursued before MIIP, and the court will suspend the damages case until MIIP’s decision becomes enforceable.

Patents and related rights defences include qualifying private and non-commercial use; experimental, scientific or academic use; regulatory-review use for human-health medicines; national exhaustion; prior use; temporary transit; specified uses of biological material; and use or preparatory acts during the statutory rehabilitation period. Separate defences apply to layout designs, including private or research use, independent creation, exhaustion and limited protection for an initially innocent acquirer who pays a reasonable royalty after notice.

Trademark defences include prior continuous good-faith use, exhaustion and parallel importation of legitimate goods under the statutory conditions, and qualifying use of a person’s own name or corporate name. Trade-secret liability does not arise from independent discovery or creation, permitted observation, study, disassembly or testing, or another lawful acquisition not subject to a confidentiality duty.

Copyright defences include absence of protected expression, originality, fixation, ownership or an unauthorised reserved act; public-domain status; authorisation; and the statutory limitations and exceptions. Database protection does not extend to the underlying data, and the exclusive-use right in a non-original database lasts five years.

For plant varieties, qualifying breeding or research use, limited own-use multiplication and use for human or animal consumption benefiting the harvester are permitted.

The person entitled to challenge a right depends on the right and the type of proceeding.

Industrial-property rights.

By virtue of its ex officio powers, MIIP may initiate invalidation, non-use cancellation, and cancellation proceedings on its own initiative. In practice, however, these proceedings are generally commenced upon a petition filed by a person having a legal interest in challenging the relevant right.

In proceedings concerning an alleged infringement of a registered industrial-property right, the claimant will ordinarily establish its legal interest by demonstrating ownership of, or another legally enforceable interest in, the intellectual property right allegedly affected by the infringement.

It is also important to note that the holder of the registration against which an infringement action has been brought is not limited to defending against the claimant’s allegations. The defendant may, by way of counterclaim, bring an independent action seeking the invalidation or non-use cancellation of the intellectual property right relied upon by the claimant as the basis for its infringement action.

On the other hand, the same principle applies to appellations of origin and geographical indications, although MIIP may act on its own initiative, proceedings are typically commenced at the request of a party with legal interest.

For unfair-competition claims, the claimant must establish a specific legal interest arising from the alleged competitive injury.

Trade-secret protection does not depend on registration. Accordingly, where a trade secret is asserted, an affected party may contest whether the information satisfies the statutory requirements for protection, including its confidential nature, commercial or industrial value and the measures adopted to preserve its confidentiality.

Copyright, databases and trade secrets.

Copyright and database protection arises without constitutive registration. A defendant or another person whose legal position is directly affected may therefore contest protectability, ownership, subsistence or scope when the right is asserted.

Plant varieties.

SADER conducts proceedings concerning invalidation or revocation of a breeder’s title when the applicable grounds are raised.

The timing of a challenge depends on the right and the statutory ground.

Patent applications.

Any person may submit information concerning the patentability of a published patent application within two months from the working day following publication. The submission does not suspend prosecution.

Trademark applications.

Any interested person may oppose a published trademark application within one month after publication. Opposition does not predetermine the outcome of MIIP’s substantive examination.

Post-grant industrial-property challenges.

Invalidation of a patent, utility model, industrial design, integrated-circuit layout design or supplementary certificate granted under the current law may be sought at any time from the date on which publication of the corresponding right takes effect. However, patents and certain other rights granted under the former Industrial Property Law remain subject to the invalidation grounds and applicable time limits established under that law. In particular, certain invalidation grounds under the former law were subject to a five-year limitation period from the date on which publication of the patent or registration took effect.

Trademark time limits depend on the ground. Claims based on prior use, false first-use information or a prior application or registration must be brought within five years after granted. Claims based on contravention of law, an unauthorised filing by an agent or related person, or bad faith may be brought at any time.

It’s important to note that a ground already decided in opposition may not be relitigated through invalidation on the basis of the same arguments and evidence.

Non-use cancellation and cancellation.

A trademark non-use cancellation action may be filed after three consecutive years of non-use immediately preceding the request, absent justified cause. A registration may also cease for non-renewal or failure to file the required declaration of use, while cancellation for genericide may be pursued once the statutory conditions arise.

Appellations of origin and geographical indications.

A declaration of protection may be modified at any time. A use authorisation may expire, be declared invalid, be cancelled or be subject to a non-use cancellation action when the corresponding ground arises. Foreign recognitions are subject to separate invalidation and cancellation grounds.

Copyright, databases, trade secrets and plant varieties.

Because copyright and database protection is automatic and trade-secret protection is unregistered, protectability, ownership and subsistence may be contested whenever the claimed right is asserted. Plant-variety invalidation may be pursued while the title remains effective, and revocation may be declared whenever a statutory revocation ground arises.

Challenges to industrial-property rights are brought through an administrative declaration proceeding before MIIP. The petition must identify the challenged right and interested parties, state the relief, facts and legal grounds, and include the supporting evidence. MIIP serves the holder, receives the answer and evidence, allows closing arguments and issues a reasoned decision. Please note below specifics for each type of right.

Patents and related rights.

A patent may be declared wholly or partly invalid where the subject matter is not an invention or is not patentable; novelty, inventive step or industrial applicability is absent; disclosure is insufficient; the claims exceed the original disclosure; divisional treatment is impermissible; a correction or limitation broadened the protected matter; priority was erroneously recognised in a manner affecting novelty or inventive step; or the patent was granted contrary to the applicable statutory requirements.

Corresponding invalidation grounds apply to utility models and industrial designs. A layout-design registration may be declared invalid if the subject matter did not satisfy the statutory requirements. A supplementary certificate may be declared invalid if it was granted contrary to the applicable requirements or if the underlying patent is declared invalid or renounced. These rights may also cease upon expiry, failure to pay maintenance fees or other statutory grounds.

Trademarks and other distinctive signs.

A trademark registration may be declared invalid because it was granted contrary to law; because of qualifying prior use, false first-use information, an earlier application or registration, an unauthorised filing by an agent, representative, user, distributor or related person; or because of bad faith. A registration may cease for non-renewal, three consecutive years of non-use or failure to file the required declaration of use, and may be cancelled for genericide or voluntarily. Certification marks are subject to additional cancellation grounds, while the trademark rules apply, as appropriate, to commercial slogans and published commercial names.

Appellations of origin and geographical indications.

A use authorisation may be declared invalid if granted contrary to law or on false information or documents. It may be cancelled where use is inconsistent with the declaration, the applicable legislation, the required legend, the applicable Mexican Official Standard or the rules of use. A non-use cancellation action is available after three years of non-use, and the authorisation terminates upon expiry. Recognition of a foreign appellation of origin or geographical indication is subject to separate invalidation and cancellation grounds.

Copyright, databases and trade secrets.

Copyright protection is automatic and registration is declarative. Protectability, originality, fixation, title and scope are therefore ordinarily contested before the competent court when the right is enforced. For databases, the analysis additionally concerns original selection or arrangement, maker status and, for non-original databases, the five-year term. A final INDAUTOR act concerning a record, annotation or registration may be challenged before the FCAA. Trade secrets and contractually protected know-how have no registration to challenge; the authority or court determines whether the statutory or contractual requirements are established.

Plant varieties.

A breeder’s title is challenged before SADER. Invalidation applies where the variety did not satisfy novelty, distinctness, stability or uniformity when the title was granted. Revocation applies for two years’ failure to pay the applicable fees, alteration of the pertinent characteristics, failure to provide the required propagation material within six months of a request, or loss of stability or uniformity, after notice and an opportunity to respond.

Mexican law does not establish a general intellectual-property-wide action for a declaration of non-infringement or a general licence-of-right system, but it provides mechanisms that remove or limit the effect of particular rights.

Patents and related rights.

A patent or registration owner may renounce the right or request correction or limitation, provided the protected matter is not broadened. Compulsory licences may be granted for qualifying patent non-working, and public-utility licences may be granted in emergencies, for national security and for serious diseases declared to be priorities. These licences are non-exclusive, and public-utility licences are non-transferable.

Trademarks, appellations of origin and geographical indications.

Trademark rights may cease through non-renewal, a non-use cancellation action, failure to file the required declaration of use, genericide or voluntary cancellation. Declarations of protection, use authorisations and foreign recognitions for appellations of origin and geographical indications may be modified, cease to have effect, be declared invalid, be cancelled or be subject to a non-use cancellation action on the applicable grounds.

Copyright and databases.

Copyright is limited by the statutory exceptions and limitations and, in the public interest, by publication or translation authorisations subject to compensatory remuneration. Database protection does not extend to the underlying data, and the exclusive-use right in a non-original database is limited to five years.

Plant varieties and contractual limitations.

A breeder may irrevocably renounce the exclusive exploitation right, causing the variety and its propagation material to enter the public domain. SADER may also grant emergency licences under the statutory conditions. Licences, coexistence agreements and settlement agreements may limit enforcement contractually between the parties.

The principal final remedies depend on the right asserted.

MIIP.

For industrial-property infringement, MIIP may issue a declaration of infringement, impose administrative fines, order temporary or definitive closure and determine the legally appropriate disposition of secured goods. The LFPPI also contemplates an administrative damages mechanism after an enforceable infringement decision, subject to the statute’s implementation provisions.

INDAUTOR and MIIP.

INDAUTOR may impose sanctions for copyright administrative infringements. In matters of commerce, MIIP may impose the corresponding copyright-related sanctions, including those connected with border and online enforcement.

SADER.

For plant-variety infringement, SADER may impose fines and order cessation of the infringing conduct. The parties may submit damages disputes to SADER arbitration.

Damages.

Damages for industrial-property infringement may be claimed directly before the competent court without a prior MIIP infringement declaration. The indemnity may not be lower than 40% of the legitimate value indicator selected by the affected right holder, and the claim is generally subject to the applicable marking requirement.

For copyright and database infringement, final judicial relief includes cessation, reparation and damages of no less than 40% of the public sale price of the original product or service, or an amount determined through expert evidence where that measure cannot be applied. Civil damages for plant-variety infringement may also be pursued before the competent court. Qualifying industrial-property and copyright conduct may additionally result in criminal sanctions and reparation of damage.

The cost of an intellectual-property enforcement proceeding depends on the authority involved, the complexity of the dispute and the nature of the evidence required.

Costs and costs recovery. Official filing fees are payable when administrative proceedings are commenced before MIIP, INDAUTOR or SADER, in accordance with the applicable fee schedule. Each party must also bear its own legal fees and related expenses, including expert fees, translations, inspections, evidence-preservation work, notarisation or certification costs and other disbursements.

By contrast, proceedings before the FCAA and subsequent proceedings before the federal judicial courts are not subject to official filing fees. Each party must nevertheless bear its own legal fees and related expenses.

In civil and commercial judicial proceedings, the successful party may, depending on the applicable procedural regime and the circumstances of the case, seek recovery of recoverable litigation costs and expenses from the unsuccessful party. Such recovery is not automatic in every case and remains subject to the applicable procedural rules and the court’s determination.

Accordingly, the overall cost of enforcement depends primarily on the complexity of the dispute and the nature, volume and technical content of the evidence required.

Security for costs.

There is no general procedural mechanism requiring a claimant to post security for the opposing party’s prospective litigation costs merely to commence an intellectual-property enforcement proceeding.

This should be distinguished from the bond that may be required to obtain provisional injunctions. Such bond is intended to cover potential harm caused to the affected party if the injunction is subsequently found to have been unjustified. Where permitted by the applicable law, the affected party may also post a counterbond to seek the lifting of the provisional injunction.