This year 2011 the Patent's System in Mexico has been mainly
characterized by two major events: a) the designation of a new
General Director of the "Mexican Institute of Industrial
Property" "Instituto Mexicano de la Propiedad
Industrial" (IMPI in Spanish); and, b) the entrance of the
IMPI to the Patent Prosecution Highway Pilot Program (PPH).
Firstly, on April 15, 2011 Rodrigo Roque Díaz was
designated as the new General Director of the IMPI, succeeding
Jorge Amigo, who had successfully directed the Institute for 18
Rodrigo Roque Díaz has come with the command to refresh
and strengthen the legal aspects of the IMPI, with the purpose of
maintaining the Mexican Patent Office as a fundamental organization
for the development and competitiveness of our country and as one
of the best patent offices in Latin America.
Under these new circumstances, Dr. Rodrigo Roque has adopted his
first decisions and carried out some changes in the organic
structure of the IMPI. On June 17, 2011, he appointed three new
leaders in the following fundamental areas looking for a better
operation and functionality of the Institute.
Mr. Eliseo Montiel Cuevas as the new Divisional Director of the
Mr. Miguel Ángel Gutiérrez Tortosa as the new
Divisional Director of the Intellectual Protection Area; and,
Mr. Rodrigo Turrent Nuñez as the new Divisional Director
of the International Affairs Area.
These three new Divisional Directors are lawyers, who have a
solid background in public administration, as they have worked for
several years in different agencies for the Mexican Government.
Particularly, they have been involved in different areas and
positions into the "Procuraduría Fiscal de la
Federación" (the office of the Fiscal Procurator of the
Treasury Department) and in the "Procuraduría General
de la República" (the Attorney General's Office),
during their professional development into the public sector.
Secondly, and following the international trends in the
patent's world, the IMPI has entered to the Patent Prosecution
Highway Pilot Program (PPH).
The PPH, that is already spreading worldwide, is a practice
which can expedite the patent examination process for corresponding
applications filed in participating countries by using the search
and the examination results obtained by the signatory offices.
The PPH was launched in 2006 as a pilot program between the US
Patent and Trademark Office (USPTO) and the Japan Patent Office
Currently, 19 Patent Offices have enrolled this program, namely:
USPTO; JPO; IMPI; European Patent Office; UK Intellectual Property
Office; German Patent and Trademark Office; Korean Intellectual
Property Office; Swedish Patent and Registration Office; Canadian
Intellectual Property Office; Danish Patent and Trademark Office;
IP Australia; Intellectual Property Office of Singapore; Russian
Patent Office; Hungarian Patent Office; Austrian Patent Office;
Spanish Patent and Trademark Office; National Board of Patents and
Registration of Finland; Nordic Patent Institute; and, Portuguese
National Institute of Industrial Property.
Nowadays, the IMPI has launched the following bilateral
On March 1, 2011 it launched the PPH with the USPTO.
On July 1, 2011 it launched the PPH with the JPO.
As well, on June 9, 2011 the IMPI signed a Memorandum of
Understanding about the Patent Prosecution Highway (MoU PPH) with
the Spanish Patent and Trademark Office or Oficina Española
de Patentes y Marcas (OEPM by its Spanish acronyms), which will be
in force on October 1, 2011.
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Having spent years litigating IP matters, I have shared the frustration of clients who have been forced to intervene in administrative litigation because they are being frivolously accused of having committed an administrative infringement; their trademarks have been misappropriated; or their IP rights are being attacked in an ungrounded manner, through counterclaims that are filed in response to infringement actions previously filed by the owner of the IP right.
The last March 19, 2010 came into force the AGREEMENT by means of which the preceding agreement that establishes the guidelines for filing applications before the Mexican Institute of Industrial Property (MIIP), issued by the General Director of the MIIP and published in the Official Journal of the Federation on March 18, 2010, was modified.
Advocacia Pietro Ariboni Ariboni, Fabbri, Schmidt & Advogados Associados
The current Industrial Property Law, No. 9279/96, has been in
force in Brazil for over a decade. Generally speaking, the Law is
modern and in line with the principles of international treaties
such as TRIPS and the Paris Convention.
In recent days Mexico signed the Anti-Counterfeiting Trade Agreement (ACTA) in order to combat the counterfeiting and piracy of trade marks, inventions, intellectual and artistic works. Australia, Canada, Japan, Korea, Morocco, New Zealand, Singapore and the United States have all signed the agreement.
On December 13, 2011, in the case "Aventis Pharma S.A. v. Sandoz S.A. et al on patent infringement. Damages", Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters examined the requirement of appraising the amount claimed when filing a complaint for patent infringement.
In 2008, the Federal Court for Tax and Administrative Affairs (FCTAA) created a Specialized IP Court to decide all the cases related to IP rights, which started work in January 2009.
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