After one year of the most significant amendment to the Mexican legislation related to Industrial Designs, some of the expected changes have occurred. However, in certain aspects, the previous practice has prevailed.
The amendment to the Industrial Design chapter, that entered into force on April 27, 2018, consisted of a structural change to design protection in Mexico. There were five key aspects on the reform.
i) The incorporation of the definitions of the concepts "independent creation" and "significant degree", which are now required for assessing the novelty of the design during substantive examination.
At the time of the publication of the reform, the design practitioners were uncertain of the criteria that would be developed by the examiners of the Mexican Institute of Industrial Property (IMPI) to evaluate the impression that an industrial design could produce on an expert in the matter and, in a general level, if the definition of "significant degree"1 could convert the basic novelty requirement into a type of non-obviousness evaluation. So far, the criteria have not changed, and the evaluation of the novelty has continued as it was before the reform.
ii) The 2018 reform states that the application for an industrial design must specifically indicate the product for which the industrial design will be used. The previous version of this precept established that it was just required to indicate the genre of the product.
This amendment has clearly narrowed the scope of the pursued protection that will be subsequently granted in an Industrial Design Register. In the last year, the IMPI has continuously objected generic references requiring specifying the products.
The evaluation of unity in a design application has also changed. The novel design features must be shared among the embodiments of the same products, and not, more broadly, in the embodiments of the same genre of products.
iii) New validity of protection. Our Statutes now establish that a Design Registration will be valid for five years, from the filing date of the application. Further, the Registration can be renewed for successive periods of that same duration up to a maximum of twenty-five years. Before, Industrial Design Registrations had a non-renewable life of fifteen years from the filing date of the application subject to the payment of annuities in quinquenniums.
In practice, this amendment has resulted in confusion for the industrial design practitioners. According...