Overview of Intellectual Property in Mexico By Lic. Marlon O. Lpez, LL.M.

While intellectual Property concerns are not new to Mexico, this area has been developing for some time and taken on a heightened sense of urgency. This heightened sense of urgency is, in great part, due to the changes that Mexican society has undergone, moving from a tangible assets based economy to one where the most important assets are the intangible goods. Information, knowledge, new ideas and technology are the motors of this new orientation. In fact, the world now generates more knowledge and ideas on a daily basis than ever before and the number of workers who work with their hands has been in continual decline. While the progress of humanity has allowed thousands of people to work with their brains and not with their muscles, this may not be the reality for Mexico and other developing countries. Fortunately Mexicos government, industry, business people and even population in general have become aware of the advantages of the use of this new perspectives, have understood also the importance of the Intellectual Property protection for their competitiveness. In their quest for future success, countries are presented with two options. One option calls for the immediate and complete protection of intellectual property while the other calls for slow and incremental recognition of the benefits of protecting intellectual property. As this article will demonstrate, Mexico has decided to take the first option and will not back step. Mexico can not dwell in the past or plan for the present, it has realized the importance that developed countries give to Intellectual Property rights and protection and moved accordingly The world has changed, and Mexico has adapted. This Article will endeavor to give an overview of main areas of the Mexican Intellectual Property (IP) legal system. It will address the importance of IP legal protection in Mexico, the principal ways available to protect IP, the entailing requirements, as well as the principal problems related to those legal topics. This article will begin with an examination of the international agreements signed by Mexico, which have helped to shape the development of its IP laws. The Mexican legal framework will be analyzed in an attempt to glean the legal basis for IP protection in Mexico. This paper will move on to describe the particular regimes, which protect IP in Mexico, as well as the bodies, which regulate it. This paper will conclude with a checklist of considerations to follow in protecting IP.

INTERNATIONAL AGREEMENTS

World Intellectual Property Organization (WIPO)

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Marlon O. Lpez is an attorney partner in the Monterrey Business Consultants. He is a profesor of Intellectual Property at ITESM, Director of the Intellectual Property and Technology International Center and Coordinator of the IP colaboration agreeement ITESM-IMPI. He has an LL.M. in International Trade and Commerce with specialization on Intellectual Property, an LL.M. in International and Comparative Law and is a doctoral candidate, focusing on Intellectual Property, at Tulane University.

On June 14, 1975, Mexico became a signatory to WIPO, (also known by its Spanish acronym OMPI, Organizacin Mundial de Propiedad Intelectual). As well, Mexico is a signatory to most of the important treaties related to Intellectual Property Rights. A list of the most important international IP treaties signed by Mexico as well as the date of Mexicos inclusion is provided: * Paris Agreement for Protection of the Industrial Property (1883 ). September 7, 1903. * Nairobi Treaty for the Protection of the Olympic Symbol (1891). May 16, 1996. * Lisboan Agreement related to Origin Denominations and its International Registry (1958). September 25, 1966. * Berne Convention for Literary and Artistic Creations Protection (1886). June 11, 1967. * Rome Convention for the Protection of Artists, Interpreters and Executants, Producers of Phonograms and Radio-diffusion Organisms (1961). May 18, 1964. * Geneva Agreement for the Protection of Phonograms Producers Against Not Authorized Reproduction (1971). December 21, 1973. PCT.- Patent Cooperation Treaty On January 1, 1995, Mexico is one of the more than 100 nations that form part of the PCT. More than 90% of Mexicos patent applications come from PCT country members, led in order of number of applications and patents granted, as in most of the world, by the United States, the European Union and Japan. As a consequence of Mexicos inclusion in the PCT, the number of patents has had a sustained annual growth of approximately 10%. Currently most of the applications presented include the International Preliminary Examination Report, as established by Chapter II of the PCT. The PCT procedure facilitates the processing of patent applications in members countries through the use of one single application (International Application), eliminating the initial filing of applications in various countries and consequently reducing the initial costs. The right to grant or not a patent still on each national office, and it is independent of the international phase acceptance. As of 1995, the Spanish Patent and Trademark Office (SPTO) is the International Authority authorized to facilitate Mexican application searches, which lowers the translation costs given that the application and the office uses the Spanish language. TRIPs (ADPIC).- Trade Related to Intellectual Property Mexico is part of the World Trade Organization (WTO), also known by its Spanish acronym OMC Organizacin Mundial de Comercio, and it is part of the Trade Related to Intellectual Property, or TRIPs Agreement, also better known in Mexico as ADPIC Acuerdo Sobre Derechos de la Propiedad Intelectual Relacionados con el Comercio. In 1994, Mexico became a signatory to the Marrakech agreement of the WTO, which included the implementation of the TRIPs Agreement. Under this agreement, Mexico included in its Intellectual Property rights concepts: Authors Rights, Connected Rights, Trademarks, Geographic Indications, Industrial Designs, Patents, Integrated Circuits Designs and Industrial Secrets. TRIPs includes Basic Principles for the Intellectual Property Protection, National Treatment Minimum Protection Standards, Enforcement, Acquisition and Maintenance of the rights and Prevention and Dispute Solving Mechanism. The treaty is incorporated together with other important IP international treaties: The Paris, Rome and the Berne Conventions, and includes some basic free trade concepts: National Treatment, Most Favored Nation Treatment and The Existing Subject Matter Protection Principle.

As previously mentioned, Mexico is also part also of various other IP treaties as: Rome Convention, Berne Convention, Paris Treaty, Geneva Convention, Brussels Convention, Authors Rights WIPO Treaty, Interpretation and Execution of Phonograms WIPO Treaty and a various Free Trade Agreements (FTAs) with differing levels of IPR protection. These FTAs include: NAFTA Mexico-Canada-United States (1994). Includes general principles, authors rights, satellite signals, trademarks, patents, integrated circuits, industrial secrets, geographic indications, industrial designs, infractions, cooperation and assistance, and definitions. FTA Mexico-Bolivia (1995). Includes authors rights protection, satellite signals portraying programs, trademarks, franchises, patents, utility models, industrial secrets and enforcement. FTA Mexico-Costa Rica (1995). Includes trademarks, geographic indications, not divulgated information, authors rights, satellite signals portraying programs and enforcement. FTA (G3) Mexico-Colombia-Venezuela (1995). Includes authors rights, trademarks, origin denominations, industrial secrets, vegetal varieties, technology transfer and enforcement. FTA Mexico-Nicaragua (1998). Includes trademarks, geographic indications, origin denominations, not divulgated information, authors rights and enforcement. FTA Mexico-Chile (1999). Includes authors rights, trademarks, origin denominations and enforcement. FTA Mexico-European Union (2000). Includes authors rights protection, trademarks, origin denominations, patents, industrial secrets, geographic indications, integrated circuits and enforcement. FTA Mexico-Israel (2000). Includes denominations of origin: Tequila and Mezcal and enforcement. FTA Mexico-Guatemala-El Salvador and Honduras (2000). Includes some basic IP protection concepts. NAFTA Ch. XVII NAFTA the North American Free Trade Agreement, known in Spanish as El Tratado de Libre Comercio para America del Norte (TLCAN), was signed by Mexico, Canada and the United States on December 17, 1992 and entered in force by January 1, 1994. NAFTA is by large the most important Free Trade Agreement Mexico has signed, it has 22 chapters divided in eight sections with various annexes and more than 2000 pages.

Chapter XVII of NAFTA deals with Intellectual Property.

Its 21 articles contain the

fundamental guidelines to be followed by the member states. Mexico has complied with all these provisions and as a result IPR has had an increasingly important development. NAFTA Part SIX, Chapter XVII INTELLECTUAL PROPERTY, is divided in the following articles:

1701: Nature and Scope of Obligations 1702: More Extensive Protection

1703: National Treatment 1704: Control of Abusive or Anticompetitive Practices or Conditions 1705: Copyright 1706: Sound Recordings 1707: Protection of Encrypted Program-Carrying Satellite Signals 1708: Trademarks 1709: Patents 1710: Layout Designs of Semiconductor Integrated Circuits 1711: Trade Secrets 1712: Geographical Indications 1713: Industrial Designs 1714: Enforcement of Intellectual Property Rights: General Provisions 1715: Specific Procedural and Remedial Aspects of Civil and Administrative Procedures 1716: Provisional Measures 1717: Criminal Procedures and Penalties 1718: Enforcement of Intellectual Property Rights at the Border 1719: Cooperation and Technical Assistance 1720: Protection of Existing Subject Matter 1721: Definitions ANNEX 1701.3 Intellectual Property Conventions ANNEX 1705.7 Copyright ANNEX 1710.9 Layout Designs ANNEX 1718.14 Enforcement of Intellectual Property Rights Most of these IP articles are general rules that bind the member Parties. While not imposing direct rights, it sets minimum standards of protection, which is helping to create confidence in Mexico as a venue to develop IP rights.

Legal Framework The two Constitutional articles, which allow and regulate Intellectual Property in Mexico are 28 and 73. Article 28, in its first paragraph, taken together with other limitations that limit monopoly practices and tax exemptions, prohibit the monopolies. However, in a later list of exceptions to this prohibition, together with state duties, currency printing, control of oil etc., the same article mentions a temporal exception for IPR. Specifically, it states: Privileges granted for a limited time to authors and artists for the production of their creations and the ones given to inventors and perfectionists of an advantage will not constitute a monopoly.2 While the definition and the whole concept could be made more clear, the rule is simple- the Constitution prohibits the monopolies in Mexico, and later gives a list of exceptions of conduct that is exempt from the prohibition. Among those exceptions are the rights given to authors and inventors, as stated above. Article 73 of the Constitution lists the powers of the Congress, which includes, amongst others in a long list, the power to: X.- Legislate in the Republic with respect to thecinematographic industry,; XXIX-F.- Expedite laws tending to promote Mexican investment, regulation of foreign investment, technology transfer and the generation, diffusion and application of the scientific and technologic knowledge required by the national development.3

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Article 28. Mexican United States Political Constitution. Article 73 fracc. X and XXIX-F. Mexican United States Political Constitution.

These two brief articles are the constitutional support of all the IP laws and regulations in Mexico. However, other constitutional articles may be applicable in some cases. Articles 14 and 16 with respect to legal procedures (e.g. IP infringement), 82 regulation power of the president (e.g. Industrial Property Law Regulation), 123 workers rights (e.g. an authors new creation made by a labor relationship), 103 and 104 for amparo protection (e.g. constitutional violations affecting individual guarantees and administrative IP procedure), etc. Intellectual Property in Mexico is regulated by various laws, regulations, accords, decrees etc. The most important are listed below, together with its name in Spanish and date of publication in the Diario Oficial , the Official Federal Gazette: 1 - Ley de la Propiedad Industrial (Industrial Property Law), June 27, 1991; 2.- Ley Federal del Derecho de Autor (Federal Copyright Law), December 27, 1996; 3 (Reglamento de la Ley de la Propiedad Industrial (Regulations of the Industrial Property Law), November 23, 1994; 4.- Reglamento de la Ley Federal del Derecho de Autor (Regulations of the Federal Copyright Law), May 22, 1998; 5.- Reglamento del Instituto Mexicano de la Propiedad Industrial (Regulations of the Mexican Institute for Industrial Property), November 23, 1994; 6.- Decreto por el que se crea el Instituto Mexicano de la Propiedad Industrial (Decree by which the IMPI was created), December 10, 1993; 7.- Estatuto Orgnico del Instituto Mexicano de la Propiedad Industrial (Organic Statutes of the IMPI), December 5, 1994.

Intellectual Property Distinction Intellectual Property is subdivided into two different areas, Industrial Property and Authors Rights. Industrial Property is regulated by the Industrial Property Law and it is administered by the Instituto Mexicano de la Propiedad Industrial (Mexican Institute of Industrial Property), known as IMPI, its Spanish acronym. Industrial Property includes: Patents, Utility Models, Industrial Designs, Integrated Circuits and Industrial Secrets, Distinctive Signs: including, Trademarks, Signs and Commercial Names and Denominations of Origin. Authors Rights are regulated b y the copyright law and it is managed by the Instituto Nacional de Derechos de Autor (National Institute of Authors Rights), known as INDA for its acronym in Spanish. Authors Rights cover personal creations from different categories: Literature, Music, Graphic and Plastic, Audiovisual, Cinematographic, Computer Programs and Databases. It also protects Patriotic Symbols and Popular Cultural expressions. This distinction is vital for two main reasons. First, not appreciating the difference can lead to confusion and seeking inappropriate protection such as trying to get patents on trademarks. Second, the concept of Author Rights is almost equivalent to Copyrights in US, but author rights comes from the French tradition not from the English. As a consequence, authors rights contain 2 different types of rights- economic and moral. Economic rights can be transmitted by sale, license, lease, heritance, etc. while moral rights are not transferable, and as a consequence the recognition of the creator as the author must be accomplished by legal obligation. That is, even when someone pays for an artistic work, he can not substitute the authors name with his name, because to do so will violate public order, which means private parties do not have the right to agree to it and can not be done in any legal manner. (the point is:

in Mexico, even if you hire someone to perform a work subject to copyright protection, the recognition to the author has to be made, even if you pay for it, and even if the author agrees in a contract to his name to be erased. Later the author can come back and have such contract as void because was made against the law, even when he previously agreed to it. Private Pacta sunt servanda can not go against public order dispositions.)

Industrial Property Law Since 1991, La Ley de Fomento y Protecion de la Propiedad Industrial (? There was an IP law, which was changed for this one, in 1991. In 1994 (look next paragraph), this law name was changed to the actual name (Ley de la Priopiedad Industrial) along with some other reforms, the name changed but it was the same 1991 law), Law to Foment and Protect the Industrial Property, regulates industrial property law in Mexico.4 It improved protection from the previous law by including patent protection for microorganisms in biological matter, chemical, food and drinks, medical and agrochemical processes. Previously, patent applications were published after 18 months of filing, not as an opposition system but as technology information diffusion, etc. Utility models, an improvement made to a patent without the novelty requirement, and patent protection began at filing before the authority and the protection was increased from 14 years to 20 for patents and from 5 to 10 years for trademarks. Also, a new independent government agency was created, IMPI, which remains the regulatory agency charged with overseeing industrial property in Mexico. In 1994 the old name was changed to La Ley de Propiedad Industrial and some important changes were made to include new protection, which was not previously contemplated. 5 For example, the requirements of absolute novelty and novelty examination were imposed for Utility Models. A one year grace period extending novelty for those products in the stream of commerce or presented in technology fairs or expositions was given to inventors that filed applications previously to that due date.(? When you have an unregistered new invention, and you show it up, usually in fairs or expositions, in the past you lost the right to patent it because you divulgated the information and made it public, when the invention is on the public domain is unpatentable. The reform helped, because now even if you divulgate your invention, you have 1 year after the disclosure to file a patent application without loosing your rights) No additional rights, than the ones given in foreign countries, are granted for patents and only two administrative payments are required for research and issuing of patents services. Parallel Imports are permitted in accordance with antitrust principles, allowing a legal importer of a legitimate product to do it without infringing a local trademark. La Ley de Propiedad Industrial6 also lists the prohibitions to granting patents, which include biologic processes, natural biologic and genetic material, animal species, human body and its live parts and vegetal varieties7. This law as previously explained, regulates all the industrial property area, each of the individual protections will be explained separately in the next sections. Patents Any person who realizes an invention has the exclusive right to take advantage of it. The patent protection is for 20 years, commencing on the application date, not from the grant date. As a
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Published on the Diario Oficial on June 27,1991 Published on the Diario Oficial on 1994. 6 Article 16. Industrial Property Law 7 Creators of Vegetal Varieties protection is given to anyone who obtained or developed a new vegetal variety of any gender or specie by the Federal Law of Vegetal Varieties published on the Diario Oficial on October 25, 1996, and it is administrated by the Agriculture, Livestock, Rural Development, Fisheries and Alimentation.

consequence, the duration of the patent protection will vary considerably depending on the time it takes the authority to grant the patent. Given the importance of time in the application process, it is wise counsel to present all the necessary documents from the beginning, avoid delays and patent rejections from the IMPI, make the correct payments and, above all, retain competent legal advise. Not utilizing a qualified IP attorney can cause the process to be delayed for months even years while the patent protection time is running. Unlike other types of IP protection, like trademarks, patents are not renewable, and the time is a very important factor to consider. Once submitted, patent applications are submitted to a form examination. If all the formal requirements are fulfilled, then it moves to a second stage called substantive or in-depth examination, where substantive patent requisites are analyzed. These include novelty, inventive activity and the industrial application of the patent. While the substantive examination covers the same requisites as many of other countries, the determination of what may be patented may vary from country to country. In Mexico, the minimum requirements for a patent may be higher than in other countries due to the possibility of utility model protection. In Mexico, the degree of novelty required to issue a patent is carefully studied, and if not fulfilled, then only utility model protection will be issued. The 20 years of protection has become an international standard intended to permit the recovery of the investment made. However, other important factors to consider include licensing and getting patent protection in different countries. Given its increasing standards of protection and rights enforcement as well as its relatively low costs, Mexico has become an ideal place to develop technology. Utility Models The concept of protection for utility models is not known in many countries, including the United States. A Utility Model is any object, utensil, apparatus or tool, which, as a result of a modification to its layout, configuration, structure or form, results in a different function from its constituent parts or creates advantages in use. In practical terms, it is a patent with less stringent standards for acceptance and a shorter period of protection. Utility models allow an inventor to protect combinations on already existing devices, or to get protection for the improvements made to already existing devices, instead of requiring the rigorous novelty standard. As the standard is lower, it allows a larger number of small changes, improvements or competitive advantages to be protected, when they otherwise would be on the public domain. The protection, however, only lasts for ten years. While it is easier to get protection for an utility model, albeit for a shorter duration, than a patent, it is also easier to infringe a protected utility model. The decision on whether to make use of utility model protection will depend on the subject matter. However, its existence and the possibilities it offers is certainly one of the competitive advantages Mexico enjoys in IP protection. Industrial Designs Any drawing or form for the decoration of a product or to give it its own appearance or image may be classified as Industrial Design. Industrial Design is divided into two categories: industrial drawings and industrial models. Industrial drawings are any combination of shapes, colors or lines, which are incorporated in an industrial product for ornamental purposes, giving it a peculiar and unique aspect. Industrial models are any three-dimensional shape object, used as a model or pattern for the manufacture of an industrial product, which gives it a special appearance, but does not necessarily imply any technical effects. The use and protection of an industrial design will vary, depending of the business requirements, but it is important to note that in some cases, such as trademarks, industrial designs can be protected under copyrights. While a different protection is obtained for different concepts, the end result is having

double protection. For example, if one may protect the design of a metallic structure, to be used in a factory, as an industrial design, and also protect the drawing of the architectural prototype under authors rights, or even such design could be also part of a trademark. (TRADEMARK? Not really, but could also be possible with some imagination. Just take of the bold, it is ok as it is.) Solicitud de Registro de Patente, Modelo Ide Utilidad o Diseo Industrial (Patent, Utility Models and Industrial Designs Application). The application for patents, utility models and industrial designs are all in only one format, where the applicant selects the type of registry. A copy of such a format is included in the appendix A. The form solicits basic information, which is used in the evaluation process. A well drafted form is the first step in a successful and timely application. Practical considerations in the drafting of the application includes:: A).- Applicant: 1.- Determine if the applicant is the same as the inventor. Usually the inventor utilizes an agent, normally the patent attorney and necessarily a physical person, not a legal fiction. 2.- Full Name. In Mexico the full names are constituted by first name, second name, last name and second last name. 3.- Nationality. Could be any country. 4.- Address. (Street, Number, Village and Zip Code) It is recommended to provide a local address to receive communications. 5.- City, State and Country. It is recommended to file the application at the corresponding IMPI delegation because its acceptance is determined by the person reviewing the documents. (e.g. if the address of the applicant is Monterrey, it is recommended to present it at IMPIs Northeast Offce, and not in Merida or Guanajuato. 6.- Telephone (include area code). Again, a local number is recommended. 7.- Fax (include area code). It is recommended to provide a fax number, to facilitate the any interchange of documents. B).- Inventor: inventor. 1.- The same as the applicant, except number 1. Also a physical person must be the Legal fictions and institutions are not accepted. 2.- The information must be exactly the same if both are the same person.

C).- Person with Power of Attorney. A power of attorney document containing certain legal requirements must be made from the applicant (inventor) to the agent. It does not have to be made before a notary, a simple letter is enough, but certain legal requirements are still necessary. (See appendix B.) 1.- Full Name. 2.- General Powers Registry Number (If the Power of Attorney is already registered before the IMPI). The IMPI has its own database of power of attorneys to avoid the necessity of requesting new copies every time a new procedure is undertaken. 3.- Persons Authorized to review the file. Usually, the law or consulting firms that work in this area have many lawyers who constantly visit the IMPI premises. Authorizations for them avoids time and cost. 4.- Address. (Street, Number, Village and Zip Code) 5.- City, State and Country. 6.- Telephone (including area code). 7.- Fax (including area code). D).- General Information

1.- Denomination or Invention Title. The title must be descriptive of the invention. For example, an anti theft lock for the extra car tire, may not be called the working machine . As this is not properly descriptive, failing to explain anything, it will be refused. 2.- Previous Divulgation Date refers to the first time the invention was made public by any means. The must important consideration is not to provide an old divulgation date, but to be capable of fully proving the date provided as the divulgation date. If an invalidation of the patent procedure is undertaken and the date can not be proved, the patent will be cancelled. While various documents, such as scientific magazines, contests or exhibitions may be used to prove it, legal advice is always recommended. 3.- Application Division (Number, Legal Figure and Filing Date) if applicable. Only in cases where an application is submitted to divide a previous patent application. 4.- Solicited Priority (Country, Date and Series Number). In cases where a patent application was already made in other country, there is only one year grace period, after the date of the other country application, to apply in Mexico and keep the previous priority date. This benefit is limited to Paris Treaty country members. E).- Annexed Documents (If applicable): 1.- Tariff Payment Receipt. Must be undertaken through a bank. Without the payment, the process will not begin, and it is not possible to do it at the IMPI offices. 2.- Description and Claims of the Invention. As in any other country, it is recommended to get local help due to variations. Claims used in other countries may be recommended in order to broaden the protection sought. If the patent is to be presented for the first time in any country, the process will take longer and the writing must be carefully drafted in order to get the best possible patent protection. 3.- Drawings (If applicable). Usually the ones previously used are acceptable 4.- Summary of the Invention Description. The summary must be a real summary, and not a copy of the claims or the description. It is recommended that the inventor write everything and get it reviewed by the attorney. 5.- Certified Document Crediting the Power of Attorneys Legal Personality. This document no longer has to be notarized in particular cases, a simple power of attorney with two witnesses is enough. A corporation still requires a notarized power of attorney . 6.- Cession Rights Document (If Applicable). In cases where the inventor wants to transfer his patents. It usually occurs when the inventor is working on behalf of a legal person (e.g. a company). 7.- Biologic Material Deposit Document (If Applicable). Only in cases of a biologic patent application. 8.- Previous Divulgation Documents. Any way the invention was made public as is necessary to prove the date. For example, a scientific magazine, a technology prize etc. 9.- Priority Documents. As necessary to prove the date. 10.- Translation. All format documents must be in Spanish. Any document in another language must be translated. As official translation is not required, the cost may be lower with a simple translation. F).- Other Requirements: 1.- Name and Signature of the Applicant or its Delegate. The signature must be authentic. 2.- Place and Date. The application will be time stamped as to date and hour at the IMPI office. Regardless of any date written in the application, the IMPI clock stamp is controlling. G).- Other Considerations : 1.- The application is preferably typed or completed with clear handwriting. 2.- The application must be filed in triplicate originals, in Spanish. 3.- Each original must contain the handwritten original signature. 4.- The title of the invention must comply with the type of invention.

5.- The applications can be presented by mail, courier services or fax. 6.- The time response is approximately 3 months. Responses must be obtained in any case, no assumptions may be made and the lack of an answer does not constitute acceptance. 8 Trademarks Trademarks include any visible names and shapes, sufficiently distinctive, susceptible to identify products or services to which they are applied or to be applied to, compared to other products or services of their same kind or class. Usually the first person to register a trademark is the one who gets the protection. However, there is an exception made if the trademark is notoriously well known in the country. While perhaps difficult to prove, in such cases the trademark does not even need to be registered. The different categories of trademarks include: 1.- Unnamed (drawings or colors). 2.- Named (words). 3.- Combined (both elements). 4.- Three-dimensional (containers). 5.- Collective (belonging to associations of producers or cooperatives, can be any of the above classifications). In the case of certain names or figures, trademarks are not permitted because they are included prohibited by law. The law includes prohibitions against trademarks without distinctiveness (e.g. orange juice for orange juice), moral grounds (e.g. profanity), public order (e.g. Revolution against Mexico), good custom (e.g. defamation) any legal disposition (e.g. Mexico or Estados Unidos Mexicanos, or dynamic tri-dimensional marks (e.g. Visas flying three-dimensional bird on credit cards). Commercial Names and Advertisements Commercial Names are any names given to a business, industry or service establishments to differentiate them from those of their competitors. They are automatically granted and cover all the geographical zone of the business attended by the clients. In fact, they could be granted in the entire country if the name is sufficiently widespread through commercial announcements, or just known by the consumers. Given the lack of predetermined criteria, these rights may be somewhat difficult to determine. Commercial advertisements must be registered at the IMPI and may include any phrase made to announce to the public any product or service offered by any establishment and distinguish it from the ones provided by competitors. Marketing slogans are an example of this category, which may be used to create competitive advantage. Solicitud de Registro de Marca, Nombres y Avisos Comerciales (Trademarks, Commercial Names and Advertisements Application). The application for Trademarks, Commercial Names and Advertisements is appended as Appendix C. This form contains many of the same considerations present in the patent application form and will not be repeated here. Mention will, however, be made to special considerations.
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Generally, in Mexico, when an authority does not answer the law mandates that a positive or negative answer is implied (negativa o positiva ficta). For example, if the authority fails to reply within the time required, the applicant is given the benefit of the doubt. This rule does not apply to the IMPI and if an answer is not timely delivered, a positive answer will not be implied.

A).- Applicant: 1.- Full Name 2.- Nationality 3.- Address. (Street, Number, Village and Zip Code) 4.- City, State and Country 5.- Telephone (including area code) 6.- Fax (including area code) 7.- E-mail. It may be more convenient to include the e-mail address. B).- Person with Power of Attorney. 1.- Full Name. 2.- General Registry Number of Power of Attorney (If the Power of Attorney is already registered with the IMPI). 3.- Address (Street, Number, Village and Zip Code) 4.- City, State and Country 5.- Telephone (including area code) 6.- Fax (including area code) 7.- E-mail D).- General Information 1.- Distinctive Sign. The kind of protection sought. 2.- Mark Type (Named, Unnamed, Tri-dimensional or Mixed) 3.- First Use Date (or select never used before option). As in patents the proof part is the key issue, rather than trying to claim the oldest date. 4.- Class (International classification). If ignored, the IMPI will provide it. 5.- Product or Service (Trademark or Commercial Advertisement) 6.- Principal Business Role (Only if it is Commercial Name) 7.- Establishment location. 8.- Address (Street, Number, Village and Zip Code) 4.- City, State and Country. E).- Annexed Documents (If applicable): 1.- Tariff Payment Receipt. 2.- 11 samples of the mark in color plus 7 in black and white. If the color does not need to be protected, then only 11 marks in black and white are necessary. It is recommended to use a laser printer or any other form of secure printing to avoid ink blur. 3.- Previous Priority Date Documents. (If applicable) 4.- Include Non Reservable Figures or Names (If applicable). In the case of expressions which can not be protected and will be attached to the distinctive sign. (When you register a trademark, certain expressions can be added to it, but because of its common use are not protected, For example, I can use the expression for a trademark: CEMEX Exportation Quality CEMEX will be registered as a trademark, but the part exportation quality can not be protected and can still be used for anyone else, even in the same kind of products. The same is applicable with the expressions: e.g. Ltd., Made in USA, S.A de C.V., Hecho en Mexico, etc. (Explain) 5.- If a Corporation, Certified Document Crediting the Power of Attorneys Legal Personality. If not a corporation, a simple Power of Attorney letter with two witness signature and address will suffice. F).- Other Considerations: 1.- The application must be typed. 2.- The format must be presented in original with 3 copies, and must be in Spanish. 3.- Each original must have the handwritten original signature. 4.- Each original must include an original of the mark to be registered.

Denominations of Origin The protection of an appellation( IS THIS THE SAME AS DENOMINATION yes but I do not know which would be the best way of translate it: 5 options: Denominations of Origin, Origin Denominations, Origin Appellations, Appellations of Origin or Appellations Names) of origin starts with the declaration issued to this effect by IMPI and the use thereof is restricted to the persons who are directly dedicated to the extraction, production or commercialization of the product protected this legal figure in the geographic all protected area. To date, Mexico has seven important denominations of origin protected. They include: Tequila, Mezcal, Talavera, Olinal, Bacanora, Caf Veracruz and Ambar de Chiapas. This kind of protection is difficult to obtain, the benefits are relative, and also diffused between all the possible recipients under the benefit. Other types of legal figures are recommended, such as, the collective trademark. A collective trademark, is a trademark that can be used by an indefinite number of users who belong to an association or group. They decide on the quality standards that the product must have and the necessary requisites to use the mark. The group or association owns the collective mark and all the members have the right to use it. Industrial Secrets An Industrial Secret is any information that could have industrial or commercial application, and it is kept in confidential by its owner. The information must be in someway valuable or give an economic or competitive advantage to its owner. The owner must prove the use of sufficient means or systems to preserve the confidentiality of the information. For example, keeping it safe under lock or restricting its access to key personnel. The information must exist by a physical means to be protected, such as, documents, microfilms, optic discs, diskettes etc. No procedure is necessary before the IMPI to protect these rights. In fact, industrial secrets cannot be safeguarded by the IMPI. The protection of this information is relative, and the possibility of recovering damages is even more difficult. In some cases, business know-how or any other secret could be very valuable, especially if the knowledge can not be patented. In these cases, it is wise counsel to use non-disclosure agreements with all the employees and with any other person which may come into in contact with this kind of information, such as a possible business partner. The difficulty lies in negotiating a license for an industrial secret when trying to sell or license something valuable and it is not possible to show it, nor reveal it until the license is signed. Licenses and Assignment of Rights Intellectual property rights, such as patents or trademarks, can be legally transmitted by different legal mechanisms. These mechanisms include the license, assignment, purchase, sale or by the merger or split of corporations, partnerships, joint ventures, etc. Once the appropriate mechanism has been selected, the contract should be carefully drafted to reflect the will of the parties. Particular attention should be paid to the specific rights to be transmitted, the terms of the transaction, the parties, the IPR to be protected, the term, the payment of royalties, territory, exclusivity of rights, dates of payment, the obligation or right to defend the right (patent, trademark etc.) in case of third party infringement etc. While the terms are deal specific, in general, counsel negotiating for the right should strive to achieve a more exclusive license, a bigger territory , the right to sub-license, smaller royalties, smaller initial payment, longer agreements with opt out rights, etc. Every situation will require a unique approach, specially designed negotiation strategies, and skilled counsel. An area of special concern to license negotiations is the right to new knowledge (in a patent case) or creation (in a copyright case) which emanates from the previous relationship. Another important issue to consider and clarify is who will bear the risk and the burden in case of damage if the assigned or licensed rights infringe third parties IPR.

Generalist attorneys often draft contracts, which includes IP clauses. However, it is highly recommended that local IP attorneys be retained to advise on IP matters, especially when dealing with cross-border transactions. Franchise A Franchise is legally defined in article 142 of the Industrial Property Law. In general terms, it is a widely accepted form of business association which is known for its guarantee of success, emanating from its commercial experience, trading practices, knowledge, know-how, advantages over competitors commercialization systems, etc. This system commonly involves various forms of intellectual property protection such as trademarks, industrial secrets, patents, trade names etc. It may also include other relevant information, such as commercial and technical know-how, permanent advice, commercial methods, quality standard, prestige and image of the products or services. Article 136 of the Industrial Property Law regulates the registration of franchises before the IMPI. Even though there is not an obligation to do it, it is strongly recommended that the franchise agreement be registered, otherwise the contract will not have any effect against third parties. Article 65 of the Industrial Property Regulation sets out the minimum information, which a franchise agreement must contain. This information includes the name or legal name, address and nationality of the franchiser, description of the franchise, the age of the original franchise business and, if applicable, also the master franchiser agreement, the IP rights involved, amounts and purpose of the payments to be made by the franchisee. It is important to note that the license to use a franchise must be completed in writing. The previous recommendations made in regard to licensing may also be applicable, but other issues may be very important. First, determine what will be received in exchange from the franchise agreement, typically the use of a trademark but will it will also include know how, and if so will it be only technical or will also include administrative, marketing etc. Does it include the use of a patent, a commercial name, etc. What type of franchise is being negotiated (distribution, production or services) etc. Second, which obligations will be acquired by the franchisee? Are there obligations to buy determined product sold by the franchiser, to comply with very high quality standards of product or service or to spend large sums of money in the trade dress or look for the business. Third, to determine how many years the franchise has been in operation and with kind of success. Recently, many ghost franchises has been created to scam the public. Fourth, probably the most important, to evaluate what will be received in exchange for the money paid, and balance it with the actual franchise success and the possible future success in Mexico. Even internationally successful franchises are not sure to succeed in Mexico. The cost of franchise must be balanced with the rights transmitted and especially with the risk taken. In some instances., it would be advisable to create a whole new business. Such an undertaking may be less expensive and equally successful. Furthermore, it may present the possibility to become your own franchisor and receive, rather than pay royalties. The Mexican Institute of Industrial Property On December 10, 1993, the IMPI was created. IT is a decentralized administrative authority with its own legal personality and assets. IMPI has numerous functions, which include the coordination with all the national and foreign bodies related to intellectual property, administration of the procedures to request any kind of the IPR protection in Mexico, etc.9

Article 6. Industrial Property Law.

El Estatuto Organico del Instituto de Meicano de la Propiedad Industrial (The Organic Statute of the Industrial Property Mexican Institute) is the administrative regulation which details how IMPI is structured and the functions that it is charged to perform. 10 It is also subject to other regulations including, tariffs for services rendered by the IMPI11, agreement to establish the rules for the presentation of applications12, agreement to publish the list of recognized institutions by the IMPI for the deposit of biologic materials13, agreement to determine the minimum terms of response for the procedures by the IMPI 14, amongst others. As of March 1999, the IMPI has is subject to new organic structure based on a general management with six sub management areas, divisional management of legal matters, divisional management of regional offices, strategic planning coordination, divisional administrative management, general co-management of industrial property and general co-management of backup services. Three of these divisions have sub-divisions: general co-management (Nick: please note this translation, can we translate Direccin General Adjunta as general co-management? Direccion is basically my doubt because it is applicable to most of the IMPI subdivisions on this paragraph) of industrial property, general co-management of backup services and divisional management of regional offices. The general co-management of industrial property, has three divisional managements: patents, trademarks and protection to intellectual property. The general co-management of backup services, has also three divisional managements: Information technology and systems, international relations and divisional management of promotion and technology information services. The divisional management of regional offices has created two branches, one in Monterrey and one in Guadalajara. Accordingly to the Agreement to Determine Organization, Duties and Territory of the Oficinas Regionales (Regional Offices) of the IMPI, published on the Official Diary April 7, 2000, Mexican territory will be divided as follows: *The Northern Zone, with offices in Monterrey, Nuevo Leon, will cover the states of Tamaulipas, Coahuila, Chihuahua and Nuevo Len. *The Occidental Zone, with offices in Zapopan, Jalisco, will cover the states of Jalisco, Nayarit, Durango, Sinaloa, Colima and Zacatecas. *The Bajo Zone, with offices in Len, Guanajuato, will cover the states of Michoacn, Guanajuato, Quertaro, San Luis Potos and Aguascalientes. *The Southeastern Zone, with offices in Merida, Yucatan, will cover the states of Yucatan, Quintana Roo, Campeche, Tabasco and Chiapas. The cities, which do not have an IMPI office, retain the office of the Secretaria de la Economia, (Economy Secretariat) previously called SECOFI, for the filing of documents. The recently created IMPI offices cover all the Mexican territory, but are not present in all cities. A resident of a city that does not have IMPI office may go to the city that has it or the local office of the Secretaria de la Economia. For example, Monterrey has now an IMPI office, which covers the state of Coahuila, but Saltillo, its capital, still has an office of the Secretaria de la Economia where documents may be filed, rather than going to Monterrey. While possible to file documents in cities which do not have an IMPI office, it is not recommended as it will take longer and increase the chance of problems. This will take longer, and the possibilities of misadvise are greater but still be chance to do it, is not prohibited.

10 11

Published on the Diario Oficial on December 5., 1994. Published on the Diario Oficial on August 23., 1995. 12 Published on the Diario Oficial on December 14, 1994. 13 Published on the Diario Oficial on May 30, 1997. 14 Published on the Diario Oficial on December 10, 1996.

This new decentralized format improves the service that IMPI is able to give to the public. Lower costs, time savings and the possibility to work more directly with IP attorneys in other cities, some of which are very industrialized and with great growth potential such as Monterrey, rather than having to hire a lawyer in Mexico City are only some of the benefits.

Copyright The Insituto Nacional de Derecho de Autor, INDA (the National Insitiute for Authors Rights) is a different but dependent body of the Secretaria de Educacion Publica, SEP (Public Education Secretariat) and is regulated by the Ley Federal del Derecho de Autor, (The Federal Law on Authors Rights), the Reglamento de la Ley Federal del Derecho de Autor (The Federal Law on Authors Rights Regulation) and the Reglamentos Interiores of the INDA and the SEP (Internal INDA and SEP Regulations) as part of the SEP organigram. In December of 1996, a legislative initiative was presented to the Congress to reform the earlier Ley Federal de Derechos de Autor (Federal Law on Authors Right) which had been created in 1956 and reformed in 1963, 1982 and 1991. The 1996 reform changed it to the Ley Federal del Derecho de Autor (Authors Right Federal Law) and created the INDA. The protection of popular culture was included, collective societies replaced societies of authors names, commercial violations were sanctioned, IPR were strengthened, and contracts registered in the Registro Publico del Derecho de Autor (Authors Right Public Registry) were given effect as against third parties. By virtue of Article 231 sections I X of the Federal Authors Law and Section XXV of Article 213 of the Industrial Property Law, even though the INDA is the office charged with the oversight of Authors Rights in Mexico, legal actions against infringement are performed by the IMPI . Solicitud de Registro de Obra (Copyright Application Format) The INDA has one single application format for all the 23 types of protection offered. (I do not understand?) the INDA application form is attached as appendix D. The following are practical considerations to guide the completion of the form. The requirements of this form are to be typed or handwritten in legible fashion. They include: 1.- Does the data belong to the Author or Collaborator. Some creations can be made by one single author or 2 or more co-authors, it has to be stated to whom the data belongs). 2.- Name. Last name, second last name, first names. 3.- Date of birth. Important in the determination the duration of rights. Rights usually last with the authors life. For example, a literary text will be protected for 75 years after the authors decease. 4.- Place of Birth. 5.- Nationality 6.- % of participation. To determine the proportion of the creation, and if the participation was as author, translator etc. 7.- R.F.C. (Mexican Tax Number, IRS) 8.- E-mail. 9.- Phone. 10.- Fax 11.- Address. Including: Number, Village, Municipality, State, Country and Zip Code. 12.- Determine if the owner of the rights is the same as the author, if not fill in the blank information (exactly the same as numbers 2 to 11). 13.- Legal Representative (If applicable). 14.- If a legal representative exists, the following data should be included: name of the authorized persons to receive notifications, whom is being represented and numbers 2, and 7 to 11.

15.- Creation Data Title. 16.- Synthesis. 17.- Select the Area (e.g. musical, cartoon, photographic, database etc.) 18.- Is it publicly known (yes or no). 19.- If yes, determine the Date. 20.- Select if primogenital or derivative. 21.- If it is a derivative, select the type (e.g. translation, collection, transformation etc.) 22.- Primogenital creation data. (Title and Author) 23.- Annexed documents: (e.g. receipt of payment, power of attorney, translation, etc.) 24.- Place and Date. 25.- Authentic Signature of the Author or its Representative.

Recommended Intellectual Property Checklist: 1.- Identify and classify your own IP rights. 2.- Evaluate the cost-benefit of its protection in Mexico. 3.- Remember that intellectual property is by single country, there is no automatic international protection, and most of the time the dates are a very important factor to file in different countries. 4.- Identify your competitors intellectual property rights. Evaluate the possibility of mutual infringement and negotiation, licensing and cross-licensing as a consequence. 5.- Avoid infringement of competitors or third parties intellectual property rights. 6.- Always grant or receive licenses or any other form of intellectual property transfers in writing. 7.- Get expert legal advice. Often, a generalist Mexican lawyer may not be sufficient to address concerns in this rapidly developing area. 8.- If you are already sued, get legal advice immediately and be prepared to stop the infringement and/or to be involved in an administrative and/or judicial procedures. 9.- Intellectual property protection is not an expense, it is an investment. At times, it may be the most valuable asset of the company (e.g. Reebok, Coca-Cola). It is fool hearty not to give it the importance it deserves. 10.- Even with the best intellectual property protection, you may encounter problems, in this area in many countries, but especially in Mexico. You will never be 100% safe, it is an important inconvenience, but nothing compared with the benefits it provides.

Conclusion This overview was not intended to cover all the aspects of intellectual property in Mexico. It sought to explain how the system works, which are the applicable laws, to what treaties has Mexico subscribed and what are the important aspects to consider in dealing with these issues in Mexico. The basics were addressed and this will allow business people, as well as the foreign attorney to better

understand how the overall Intellectual Property system functions in Mexico and what are the key points to consider, in order to be better prepare for negotiations with local attorneys or business partners.

Recommended Bibliography: Becerra Ramrez, Manuel. Estudios de Derecho Intelectual en Homenaje al profesor David Rangel Medina. Jalfe Daher, Mauricio. Comentarios a la Ley de Propiedad Industrial. Perez Miranda, Rafael. Propiedad Industrial y Competencia en Mxico. Rangel Medina, David. Derecho Intelectual. Serrano M. Fernando. La Propiedad Industrial en Mxico. SCJN. Seminario sobre Derechos de Autor y Derechos Conexos para Jueces Federales Mexicanos.

Appendix A: Patent, Utility Model and Industrial Design Application Form.

Solicitud de Patente Solicitud de Registro de Modelo de Utilidad Solicitud de Registro de Diseo Industrial Model o Dibujo

Uso exclusivo Uso exclusivo del IMPI Delegaciones y Subdelegaciones de SECOFI y Oficinas Regionales del IMPI. Sello No. de expediente

Folio de entrada

No. de folio de entrada

Fecha y hora de recepcin

Fecha y hora presentacin

de

Antes de llenar la forma lea consideraciones generales al reverso I

las

DATOS DEL (DE LOS) SOLICITANTE(S) El solicitante causahabiente es el

El solicitante es el inventor(*) 1) Nombre (s): 2) Nacionalidad (es):

3) Domicilio; calle, nmero, colonia y cdigo postal:

Poblacin, Estado y Pas: (*) Debe llenar el 4) Telfono (clave): siguiente recuadro

5) Fax (clave):

II DATOS DEL (DE LOS) INVENTOR(ES) 6) Nombre (s):

7) Nacionalidad (es): 8) Domicilio; calle, nmero, colonia y cdigo postal:

Poblacin, Estado y Pas: 9) Telfono (clave):

10) Fax (clave):

II DATOS DEL (DE LOS) APODERADO (S) I 11) Nombre (s): 13) Domicilio; calle, nmero, colonia y cdigo postal: 12) R G P:

Poblacin, Estado y Pas: 15) Fax (clave): 16) Personas Autorizadas:

14) Telfono (clave):

17) Denominacin o Ttulo de la Invencin:

18) Fecha de divulgacin previa ______________________ Da Mes Ao 20) Divisional de la solicitud presentacin _____________________ ________________________ Nmero 22) Prioridad Reclamada: Pas

19) Clasificacin Internacional exclusivo del IMPI

uso

21) Fecha de

___________________________ Figura jurdica Fecha de presentacin Da Mes Ao Da No. de serie Mes Ao

Lista de verificacin (uso interno) Comprobante de pago de la tarifa Descripcin y reivindicacin (es) de la invencin Dibujo (s) en su caso Resumen de la descripcin de la invencin Documento que acredita la personalidad del apoderado

Documento de cesin de derechos Constancia de depsito de material biolgico Documento (s) comprobatorio(s) de divulgacin previa Documento (s) de prioridad Traduccin

Bajo protesta de decir verdad, manifiesto que los datos asentados en esta solicitud son ciertos.

Nombre y firma del solicitante o su apoderado

Lugar y fecha

Appendix B: Power of Attorney format (POA). C. Director General Instituto Mexicano de la Propiedad Intelectual (If the POA is directed to a specific area, it must be addressed here, e.g. Direccion Divisional de Ptentes). Presente.-

John C. Smith, norteamericano, mayor de edad, en pleno uso de mis derechos y en ejercicio de los mismos, con el debido respeto comparezco y expongo: Por medio del presente escrito, ocurro a otorgar poder especial tan amplio, cumplido y bastante como en derecho sea necesario y requerido, al Sr. Juan Lopez Garza para que en mi nombre y representacin realicen los trmites necesarios ante este Instituto, con las siguientes facultades: Unica.- Facultades Administrativas y Generales y las Especiales que requieren clusula especial conforme a la ley en los terminus del artculo 2448 (Dos mil cuatrocientos cuarenta y ocho) del Cdigo Civil del Estado Nuevo Len y su concordante 2554 (Dos mil quinientos cincuenta y cuatro) del Distrito Federal, applicable en material comn, y a toda la Repblica en material federal. En lo personal me obligo, en virtud de lo anterior, a pasar y cumplir con todos los actos que mi apoderado realice en mi nombre en representacin y cumplimiento del presente mandato. (Signature) John C. Smith Monterrey, N.L. a 15 de enero de 2001. Note.- The POA must be in Spanish, it does not require apostille, notary or any other similar requirement.

Appendix C: Trademarks, Commercial Names and Advertisements

Solicit ud de

Registro de Marca Registro de Marca Colectiva Registro de Aviso Comercial Publicacin de Nombre Comercial

Uso exclusivo Delegaciones y Uso exclusivo del IMPI Subdelegaciones de SECOFI y Oficinas Regionales del IMPI Sello No. de expediente

No. de folio de entrada

No. de folio de entrada

Fecha y hora de recepcin Antes de llenar la forma lea consideraciones generales al reverso las

Fecha y hora de presentacin

DATOS DEL (DE LOS) SOLICITANTE (S)

1) Nombre (s): 2) Nacionalidad (es): 3) Domicilio del primer solicitante; calle, nmero, colonia, cdigo postal:

Poblacin, Estado y Pas: 4) Telfono (clave): 5) Fax (clave): 6) E-mail:

II DATOS DEL (DE LOS) APODERADO (S) 7) Nombre (s): 9) Domicilio; calle, nmero, colonia, cdigo postal: 8) R G P:

Poblacin y Estado: 10) Telfono (clave): 11) Fax (clave): 12) E-mail:

13) Signo distintivo: 14) Tipo de marca: Nominativa Tridimensio Innominad a Da Mes nal Mixta

15) Fecha de primer uso: Ao 17) Clase:

16) No usado

se

ha

18) Producto(s) o servicio(s) (Slo en caso de Marca o Aviso Comercial)

19) Giro preponderante: (Slo en caso de Nombre Comercial)

20) Ubicacin del establecimiento:

Domicilio (calle, nmero, colonia y cdigo postal):

Poblacin, Estado y Pas:

Adhiera en este espacio la etiqueta del Signo Distintivo solicitado (slo en caso de marcas innominadas, tridimensionales)

mixtas

Appendix D: Authors Rights Format.