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Mexico

Last Verified on Wednesday 29th May 2019

    • Mexico

      The definitions for novel and inventive step are established in article 12 of the Industrial Property Law (IPL) as follows:

      Novel: Anything that is not part of the prior art.

      Inventive step: The creative process that results cannot be evidently deducted from the prior art by a person skilled in the art. 

      In turn, prior art is defined as: the set of technical knowledge that has been made public through written or oral description, through its exploitation or any other dissemination or information means, in the country or abroad. 

      Accordingly, Mexico has an absolute novelty requirement for patentability and inventive step, by definition, requires problem-solution approach based on premises of the prior art.

      Last verified on Wednesday 29th May 2019

    • Mexico

      The invention must be evidently deducted from premises found in the prior art for solving the same problem in the same way according to the definition of article 12 of the IPL of inventive step. This means that the technical features contained in the claims must be necessarily deducted from premises in the prior art to establish lack of inventive step or obviousness. Furthermore, even though it is not considered a non-obviousness requirement as such, Mexican law establishes a non-obviousness standard for known inventions or combinations of known products. 

      Article 19 of the law establishes in section VIII that there shall not be considered inventions the juxtaposition of known inventions or mixtures of known products, its variation of use, shape, dimensions or materials, except when they are so combined or fused that they cannot function separately or when their qualities or characteristic functions are so modified to obtain a non-obvious industrial result or use.

      In practice, Mexican examiners claim to use the problem-solution approach, which involves the identification of the closest prior art, the determination of the differences between the claimed invention and such closest prior art, assessing the technical effect derived from such difference and establishing an objective technical problem underlying the claimed invention. Based on that, the examiner would determine if those skilled in the art would have deducted the invention based on the premises of the prior art for solving the same objective technical problem.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Patents: Require novelty, inventive step and industrial application - 20 years of protection as of the date of filing.

      Utility Model Registers: Require novelty and industrial application - 10 years of protection as of the date of filing.

      Design Registers: Require novelty and industrial application – five years renewable for consecutive periods of five years up to 25. There are drawings (2D and colours) and models (3D shapes).

      Last verified on Wednesday 29th May 2019

    • Mexico

      Mexican law excludes from the definition of “invention” expressly “computer programs” and “schemes, plans, rules and methods for realising metal acts, games or business and mathematical methods”.

      In practice, patents directed to computer-implemented inventions in many fields have been granted whenever the main attributes of the definition of an invention are complied with, which include the solution of a human need and energy or matter transformation at the very least. This is often managed by drafting claims directed to systems or involving some of the hardware features of the invention.

      In general, patents are available in Mexico for all fields of technology with TRIPS consistent exceptions that include therapeutic and diagnostic methods and plant varieties or human or animal body parts. In this regard, however, second medical uses in Swiss-style format and EPC 2000 format are allowed by the Mexican patent office and for plant varieties there is available UPOV protection under breeder’s rights titles and also patents that do not define plant varieties but genetically modified plants or the like.

      Last verified on Wednesday 29th May 2019

    • Mexico

      The only venue to enforce a patent is through administrative proceedings (infringement/invalidity action) before the Mexican Patent Office (MIIP), which is not a court of law, but a federal administrative entity. IP enforcement is federal law, no state law is available. However, the decisions of this office on patent infringement/invalidation cases can be appealed by any one of the intervening parties that was affected by the decision, thus bringing the matter up before a single specialised IP Court of the Federal Court for Administrative Affairs (FCAA). The decision issued by the IP Specialised Court could be appealed before the Federal Circuit Courts at Mexico City through an Amparo Appeal. By territorial jurisdiction, IP matters are mainly decided in Mexico City.

      The trends in patent litigation vary, but most of the litigation proceedings involve the pharmaceutical area.

      Last verified on Wednesday 29th May 2019

    • Mexico

      The IP Law contemplates a claim for damages and lost profit, in a civil law action. Even though claims for damages involve a lengthy proceeding in addition to the administrative infringement action, the Mexican laws intends to provide fair compensation to the affected party. 

      The IP Law establishes that the award to the plaintiff in infringement cases cannot be less than 40 per cent of the sale price to the public of each infringing product or service. However, to be allowed to claim damages, the affected title holder must have a final decision declaring the violation of the IP right.

      Last verified on Wednesday 29th May 2019

    • Mexico

      International patent exhaustion is not available in Mexico but local exhaustion of rights is considered in article 22 section II, which reads: “A patent shall not have any effects against a third party than commercialises, acquires or uses a patented product or obtained through a patented process after such product has been introduced into commerce.”

      Last verified on Wednesday 29th May 2019

    • Mexico

      Mexican companies only may use the Andean Community’s or Mercosur’s regional trademark systems if they wish to protect its mark in South America (Bolivia, Colombia, Ecuador and Peru). It will be determined under a case-by-case basis whether it is advisable to use these regional trademark systems or not.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Trademark rights protection is valid for a period of 10 years as from the filing date, same that may be renewed for further 10-year periods.   

      The petition to request the renewal of a trademark registration can be filed within a period of six months before or six months after its expiration date. 

      Last verified on Wednesday 29th May 2019

    • Mexico

      Marking is not compulsory but is highly convenient for advising the public that a trademark is registered. For products carrying a registered trademark, the only legend which is necessary is "Marca Registrada" (Registered Trademark), its abbreviations "MR" or the internationally recognised circled ® symbol. If the products cannot be marked, these marks may appear on the packages. 

      However, marking is mandatory to be in possibilities to file an eventual civil or criminal action that could arise from the violation of a trademark registration, and to request from the Mexican Institute of Industrial Property (MIIP) the implementation of any injunction measure stated in the Mexican IP Law against an infringer. The legend “Marca Registrada” (registered trademark), the letters “MR” or the symbol ® cannot be used before the mark obtains registration with the Trademark Office.

      Otherwise, using such legend, letters or symbol may represent a false marking that, according to the Mexican IP Law, are considered as an infringement conduct.  

      Last verified on Wednesday 29th May 2019

    • Mexico

      The examiners have established as criterion the refusal of goods or services that do not appear exactly as they are stated in the List of the Eleventh Edition of the International Classification of Goods and Services.

      The aforesaid criterion is very strict since the International Classification of Goods and Services is only a guide to help trademark owners  determine the correct classification of the goods or services of interest. 

      Another problem affecting trademark owners is that the examiners have also strict criteria to consider that a mark is evocative, since they tend to reject evocative marks by considering them as descriptive of the goods or services sought to be covered.

      This applies either to trademark applications filed in Mexico directly or to trademark applications filed through Madrid Protocol.

      To avoid or try to avoid this issue, it is advisable to contact an IP specialist before filing.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Recording a trademark license agreement is not compulsory in Mexico. However, such recordal with the Mexican Institute of Industrial Property (MIIP) makes the licence effective against third parties. Therefore, we highly recommend recording the corresponding licence before the MIIP. 

      This benefit implies that the use of the trademark by the user holding a registered licence shall be considered made by the owner of the trademark, with the purpose that such titleholder or the authorised licensee, if any, shall defend the trademark registration or enforce the trademark in litigation actions.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Officers at Mexico’s 49 customs offices inspect the contents of containers with Mexico as their final destination to detect counterfeit merchandise.

      Because the authorities cannot commence proceedings against counterfeit goods, rights holders must file corresponding legal actions to obtain the seizure of illegal goods.

      For this reason, the Official Database for Mexican Trademark Registrations of Mexican Customs was created in 2011. The database is designed to allow rights holders to ask Customs to record information about their registered trademarks in Mexico, so that the administrative authorities can identify counterfeit goods being imported into the country in violation of such registered trademarks.

      Mexican Customs can then review the information provided by rights holders and identify imports of counterfeit goods. This makes the process more efficient and gives Customs immediate access to detailed information about rights holders, licensees and their representatives. Further, it allows rights holders and their representatives to be contacted promptly so that they can initiate the appropriate legal actions in due time.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Despite it is not legally binding to register a domain name in Mexico if companies do business in such jurisdiction, it is advisable to register the domain name in Mexico when the business has such an opportunity.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Foreigners doing business in Mexico, have constant inquiries regarding the relatively recent Mexican Industrial Property Law amendments, which came into force on 10 August 2018, specifically regarding Declarations of Use that must be submitted. See question 22.

      Last verified on Wednesday 29th May 2019

    • Mexico

      In Mexico, the following signs may constitute trademarks:

      • denominations, letters, numbers, figurative elements and combinations of colours, as well as holographic signs;
      • three-dimensional shapes;
      • commercial names and company or business names, as they have the corresponding authorisation;
      • the proper name of an individual provided that it is not the same as a registered trademark or published commercial name;
      • sounds;
      • smells;
      • the plurality of operative elements, image elements, including, among others, the size, design, colour, disposition of shapes, labels, packaging, decoration or any other that can combine to distinguish goods or services in the market.

      It is important to keep in mind that our Industrial Property Law has just been amended. Among several important changes, the amendments include that a declaration of use must be submitted under oath within three years of the granting date of the trademark registration and along with the renewal petition. If such a declaration is not filed within the three-month period after the three-year anniversary of the granting date or after the renewal date, the trademark registration will lapse. 

      Last verified on Wednesday 29th May 2019

    • Mexico

      Yes, Mexico allows trademark opposition proceedings. Specifically, once that a trademark application is filed, the Trademark Office will proceed, within 10 business days, to publish such application in the Gazette in order to grant the opportunity to third parties who consider that an application contravenes IP rights and the IP Law, to file an opposition within one month of the date of its publication in the official Gazette. No extension of the one-month opposition period is allowed.

      Last verified on Wednesday 29th May 2019

    • Mexico

      The rights holder can initiate an administrative action against the importation of counterfeit goods by requesting preliminary measures before the MIIP. In the case of counterfeit goods, these might include seizure of the suspect merchandise or a prohibition against its sale or distribution. 

      Different types of preliminary injunction can be requested before the MIIP, these will be granted and implemented if the rights holder satisfies the following requirements:

      • it posts a bond to cover possible damages to the infringer should it fail to obtain a declaration that an infringement has been committed;
      • it proves the existence of its IP right;
      • it proves irreparable harm may be suffered as a result of the violation; and
      • it provides the authorities with the information necessary to identify the counterfeit merchandise.

      Last verified on Wednesday 29th May 2019

    • Mexico

      It is important to consider when granting a license, to determine if the licence is exclusive or not, and if the licensee will be entitled or not to grant sub-licences to third parties, pursuant to the terms of the licence agreement, and whether the licensee is entitled to enforce the trademark or not.  

      The products sold or the services rendered by the licensee shall be of the same quality as those manufactured or rendered by the owner of the trademark. Moreover, those products or the establishment in which the services are rendered or contracted, shall state the name of the user and any other particulars required by the regulations of the Mexican Industrial Property Law.

      No, the IP Law does not contemplate the ‘naked licences’, if a trademark is used by a licensee, no matter quality standards on the goods and services, the licensed trademark cannot be invalidated.

      Last verified on Wednesday 29th May 2019

    • Mexico

      No, a licence agreement is limited exclusively to grant the authorisation to the use of a trademark, while a franchise shall exist where, together with the licensing of the use of a trademark, technical know-how is transferred or technical assistance provided, so that the person to whom the license is granted can produce or sell goods or provide services consistently according to the operating, commercial and administrative methods established by the owner of the mark, so that the quality, prestige and image of the products or services distinguished by said mark may be maintained.

      Last verified on Wednesday 29th May 2019

    • Mexico

      During the corresponding examination procedure, if an official action regarding formal requirements or any objections for registration are raised, the trademark applicant will have two months (which may be automatically extended by a further two-month period) to submit legal arguments to overcome the requirement or objection for registration. 

      In that sense, if the applicant does not submit a formal reply within the period granted, the trademark application will be considered by the Mexican Trademark Office as abandoned.

      Furthermore, it should be noted that if a Three-Year Declaration of Use is not submitted within the three months after three years of the granting date in Mexico, or if the Ten-Year Declaration of Use is not filed with the renewal petition, the trademark registration will lapse.

      Moreover, if the petition to request the renewal of a trademark registration is not filed within a period of six months before or six months after its expiration date, the trademark registration will naturally expire.  

      Last verified on Wednesday 29th May 2019

    • Mexico

      Apart from the appropriate protection through trademarks, it is recommended to register a copyright in those cases that local packaging and marketing materials constitute artworks (ie, drawings, literary works, etc).

      Mexico follows the International trend of copyright protection. The Berne Convention for the Protection of Artistic and Literary Works is in force in our country and the provisions of this international treaty are incorporated into our national legislation. Therefore, artistic or literary works are protected at the time they are fixed into a material form, and it is not necessary to achieve copyright registration to obtain due protection, although obtaining a copyright certificate is highly advisable.

      Last verified on Wednesday 29th May 2019

    • Mexico

      The term of copyright protection in Mexico has been extended many times. Pursuant to the last amendment of the Federal Copyright Law on 23 July 2003, the economic copyrights protection term has been extended from 75 years to 100 years after an author’s death.

      Last verified on Wednesday 29th May 2019

    • Mexico

      There is no specific provision in the IP law relating to the doctrine of contributory infringement; however, if a third party distributes an infringing product, provisional measures may be imposed to the third parties to some extent.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Criminal actions for intellectual property infringement are available for re-offence cases. In accordance with the provisions of our IP Law, re-offence is found when a party infringes an intellectual property right after a final and beyond shadow of appeal decision from MIIP declaring the infringement. This re-offence is considered a felony that can be pursued ex oficio or ex parte through the Federal District Attorney Office (PGR). This felony can be punished with up to six years of imprisonment and a fine.

      Additionally, according to Mexican law, some counterfeiting crimes can be prosecuted ex officio and some can be prosecuted only if the injured party complains to the competent authorities. In light of this, if a rights holder becomes aware of the existence of counterfeit goods that directly affect its mark, it must file a criminal petition with the General Attorney’s Office. 

      In 2010, the Criminal Code and the Industrial Property Law were amended to grant the General Attorney’s Office the authority to act ex officio against counterfeiters selling goods bearing counterfeit trademarks if these are stored or sold in street markets or in commercial establishments.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Mexican law has recognised protection of electronic and non-electronic databases on two different basis. The difference, of course, corresponds to the need of a flexible treatment of the standard of originality. 

      As for the first basis, the law has imposed the higher standard of originality virtually equal to computer software. Although not expressly referred in the law, from interpretation can be obtained that the standard points out the middle of the scale, as it has happened in the case of computer software.

      Regarding the second basis, which considers a “rather low” standard of protection, Mexican law would still offer a specific type of protection for databases not meeting the requirements of the Copyright Law as original compilations. Under this category the law refers to non-original databases.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Publicity, the right or ability to be or not to be public, is recognised in article 16 of the Mexican Federal Constitution in terms of the interpretation of the fundamental right of privacy and as a limitation to the freedom of speech and expression right foreseen in articles 6 and 7. In this context, anyone in Mexico has the ability to decide to be publicly known or not and the right to sue for indemnification against those people who have unlawfully affected privacy rights of others by communicating their image in public media.

      The case of Mexico City law regarding publicity and protection of image rights is relevant. In year 2006 the Law on Civil Liability for the Protection of Private Life, Honor and Self-Image (LCLP) entered into force in Mexico City. This law abolished the provisions about publicity, image protection and moral damage that were formerly included in the Local Civil and Criminal Codes. 

      The LCLP introduces the concept of the “moral patrimony” as the intangible personality assets of a person in a wide sense. Its main purpose, pursuant to its article 1 is to govern situations in which the freedom of speech and expression right enters into conflict with the moral patrimony of a person. Image is defined in the LCLP as the identifiable reproduction of the physical characteristics of a person in any possible material means. Every person in Mexico City has the right to his or her self-image and has the ability to authorise or not the fixation of his or her image and the public communication thereof in any available media.

      In this context, the law qualifies a conduct as illegal, when someone publicly communicates the image of a person without a proper authorisation. The law also forbids capturing, taking, reproducing or publishing motionless or motion-integrated images of people in private events or moments.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Not regularly, as the disputes are resolved before the MIIP, but there are no legal limitations with respect to an out-of-court settlement, and the parties can stipulate any clauses they wish, provided that the terms of the settlement are not contrary to legal provisions, custom or proper commercial or moral usage.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Yes, the Official Database for Mexican Trademark Registrations of Mexican Customs was created in 2011. The database is designed to allow rights holders to ask Customs to record information about their registered trademarks in Mexico, so that the administrative authorities can identify counterfeit goods being imported into the country in violation of such registered trademarks.

      Mexican Customs can then review the information provided by rights holders and identify imports of counterfeit goods.

      Last verified on Wednesday 29th May 2019

    • Mexico

      New amendments to the Mexican Industrial Property Law were published in the Official Gazette on 18 May 2018 and entered in force on 10 August 2018, and the highlights are the following:

      • Declaration of use. The amendment indicates that it is mandatory to submit a Declaration of Use same that must be filed within the next three months after three years of the granting date of the trademark registration. If such declaration is not filed the trademark registration will lapse.
      • Non-traditional trademarks. The amendment provides the inclusion of sound, smell, holograms and trade dress as trademarks.
      • Coexistence agreements/letters of consent: The amendment recognises the possibility of submitting coexistence agreements or letters of consent to overcome a cited anticipation.
      • Certification trademarks: The amendment provides the possibility to obtain certification trademarks.
      • Class headings. With the amendment, such class headings will not be acceptable, it will be mandatory to submit the application with precise descriptions of goods and services in accordance with the Nice Classification.
      • Secondary meaning: The marks that have acquired distinctiveness in the market can be registered.
      • Opposition system: With the new amendment, the examiner is obligated to take into account an opposition and issue a grounded decision regarding the merits of the opposition brief.
      • Bad faith: The amendment introduces "bad faith" as an obstacle for the registration of a trademark. Moreover, bad faith is introduced as a ground for the cancellation action of a trademark registration.
      • Cancellation of a registration based on prior use: The deadline for filing an action based on prior use is extended from three to five years.

      Publication of the regulations of such amendments is still pending.

      Last verified on Wednesday 29th May 2019

    • Mexico

      The Mexican Supreme Court decided that a civil claim for damages and lost profits can only be filed only after the MIIP has declared the administrative infringement, and such decision is final and beyond shadow of appeal.

      Additionally, please note that the Mexican Supreme Court is closed to decide a case that may impact substantially the possibility to claim damages in Mexico. The Supreme Court is reviewing if the 40 per cent rule included in the IP Law is considered as an automatic punitive damage derived from the violation of an IP right or if plaintiff should file evidence of actual damages. 

      Last verified on Wednesday 29th May 2019

    • Mexico

      In general, documents shall not require any formalities (notarisation, legalisation/apostille) to be recognised as valid and to produce effects in connection with a licence of trademark use recordal with the Mexican Institute of Industrial Property; however, if the parties decide to provide formality to the document, there is no restriction for that, bearing in mind that if the licence agreement is certified by a notary public, such document must require a further legalisation through apostille as per the Hague Convention. 

      All documents come in foreign language shall be submitted with the corresponding translation into Spanish language.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Although Mexican law does not recognise specific online counterfeiting crimes or provide specific penalties for such activities, it is still possible to take action against online IP violations.  

      Certain provisions in the applicable legislation can also apply to online counterfeiting and may be used to combat such activities. However, the appropriate strategy must be evaluated on a case-by-case basis to determine the most suitable action.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Intellectual property in general does not have specific rules or incentives, except for royalties. General taxation rules for income and VAT will apply for intellectual property transactions and there are not incentives related to intellectual property as such. In Mexico the income tax considerations for all gross earnings apply for any earnings resulted of the transfer of trademarks, patent rights and other similar concepts, including any kind of royalty. General income tax in Mexico is 35 per cent as a maximum with a table depending on the level of income, which typically companies surpass, and the VAT rate is 16 per cent. 

      The National Council for Science and Technology has a programme for taxation incentives based on investment in research and development that is not expressly related to intellectual property. It is a complex incentive, used by very few companies, because the accounting is reviewed thoroughly and the incentive is based only on the incremental investment with respect to the former year. With regard to subsidiaries and holdings, transfers of money between related parties in general is typically watch closely by the taxation authorities, and royalties are not the exception, for which the amount has to be supported by a royalty study in arm’s-length transactions or a formal valuation of an expert. In fact, for remittance of royalties to foreign entities or corporations, Mexican tax regulations provide that royalties paid in connection with the transfer of use of trademarks and technology to foreign corporations are subject to a withholding tax of 25 per cent in account to income tax. However, Mexico has in force more than 40 double taxation treaties with other countries, which establish typically that, instead, the tax to be withheld in such cases is often between 10 or 15 per cent depending on the treaty. Accordingly, for licensing or assignment transactions with a Mexican company it is important to consider if there is a double taxation treaty with Mexico to optimise and reduce the impact of taxes in the final result of the transaction.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Mexico does not have specific rules for licensing of intellectual property rights in connection with competition law. The relationship of competition law with intellectual property law comes from the Mexican constitution, which in article 28 specifically prohibits monopolies but establishes certain exceptions, specifically stating that:

      “There shall not constitute monopolies neither the privileges that for a determined time are granted to authors and artists for the production of their works and those that for the exclusive use of their inventions are granted to inventors and to perfectors of some improvement”.

      The specific Law on Economic Competition expressly mirrors the constitutional provision in article 7, but adds a disclaimer as follows: 

      “The Economic Agents referred to in the two latter paragraphs shall be subject to this Law with regard to acts that are not expressly comprised within the protection established in article 28 of the Political Constitution of the United States of Mexico.” The intention of the addition of this disclaimer is to avoid “abuses” of IP rights. 

      Absolute monopolistic practices affecting licensing of IP rights according to article 53 are those contracts, agreements, arrangements or combinations between economic agents that compete among them, which object or effect is any of the following (among others not related to licensing as such):

      • Fixing, increasing, covenanting or manipulating the selling or buying price of goods or services that are offered or demanded in the markets.
      • Establishing the obligation not to produce, process, distribute, commercialise or acquire but only a restricted or limited quantity of goods or the provision or transaction of a restricted or limited number, volume or frequency of services.
      • Dividing, distributing, assigning or imposing portions or segments of a current or potential market of goods and services, through determined or determinable clients, providers, times or spaces.

      Based on the constitutional exception mentioned above, licensing of IP rights is an exception to monopolistic practices. Nevertheless, the reference to the limitations of the constitutional rights granted to inventors, open the possibility of considering monopolistic those licences in the context of standards where obtaining the licence is essential for competition in the same sector such as in the case of electronics. Even though there have not been any decisions or controversies issued yet related to standards and IP or FRAND licensing, the possibility is open in our current law. 

      This is even clearer with regard to relative monopolistic practices, for which the Mexican Law on Economic Competition includes specific exceptions in article 55 to the relative monopolistic practices described in article 54 of the same law. Such practices will be illicit except when such a practice implies a gain in economic efficiency such as:

      • Introduction of new goods and services
      • Taking advantage of left, defected or perishable products;
      • Cost reductions derived from the creation of new techniques and methods of production, from the integration of assets, from increases in production scale and from the production of different goods and services with the same production factors;
      • Introduction of technology advances that produce new or improved goods and services.
      • The combination of productive assets or investment and its recovery when they improve quality or broaden the attributes of goods and services;
      • Improvements in quality, investment and its recovery, and the opportunity and service impacting favourably the distribution chain; and
      • All other demonstrating that the net contributions to the wellbeing of the consumer derived from said practices surpass its anticompetitive effects.

      By definition, patented products and processes will fit into exceptions a) and d) above at least, but the burden of proof is on the Competitive Agent that implements the practices. Under this rationale, FRAND licensing in case of standards is advisable.

      Last verified on Wednesday 29th May 2019

    • Mexico

      Insolvency in Mexico is ruled by the Federal Law on Insolvency Proceedings (FLIP). Under such law, insolvency cases are managed through the Commercial Tender (Mercantile Contest) by the Federal Institute of Specialists in Insolvency Proceedings (IFECOM) under the jurisdiction of district judges. However, the handling of intellectual property and licences in insolvency proceedings is very difficult because of a lack of specialisation of the entities involved. 

      The FLIP is does not refer at all to intellectual property rights, which are typically handled as an asset tied to the tangible assets to which they may be related and licence agreements are handled just as any other kind of contract.

      For this purposes it is important to consider that Mexican law, both in the case of copyrights and industrial property rights such as patents, licensing contracts and pledges on IP rights must be registered before the authority in charge of the corresponding right (National Institute of Copyrights – INDAUTOR or the Mexican Institute of Industrial Property – IMPI) to have effects against third parties, such as in the case of bankruptcy proceedings. Accordingly, the contractual provisions and their effect in the insolvency proceeding is assessed on a case-by-case basis but definitely the language of the licence is of the essence in such determination.

       

      Last verified on Wednesday 29th May 2019

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