What is a design patent (called “industrial design” in Mexico)?
A design patent protects “how it looks” rather than “how it works”. If your product attracts clients or buyers based on how it looks you should consider filing an industrial design patent. In some inventions both design and utility are important; in such cases you should file for both utility and industrial design patents.
For example, for a shoe that has a unique ergonomic design which also provides a better grip, you should file an industrial design patent application on the ergonomic shape and a utility patent application on the better grip achieved using such design.
Two types of industrial design are allowed in Mexico
2D industrial designs, which are any combination of shapes, lines or colors incorporated in an industrial product for ornamentation purposes and which give it a specific appearance of its own; and
3D industrial designs constituted by any three-dimensional shape that serves as a model or pattern for the manufacture of an industrial product, giving it a special appearance that does not involve any technical effects.
Where to apply
The Mexican Institute of Industrial Property (IMPI) is the government agency responsible for patents, trademarks, utility models and industrial designs. As described above, the equivalent of US design patents in Mexico are industrial designs. Applications may be electronically filed via IMPI’s website (Spanish language only, and requires an electronic signature linked to a Unique Population Registry Code (CURP)). IMPI’s website can be found here: https://www.gob.mx/impi/
Mexico is a signatory to international conventions on intellectual property including the Paris Convention for the Protection of Industrial Property and the Locarno Agreement. The Locarno Agreement establishes international classifications for industrial design / design patents. As of June 06, 2020, Mexico is the 64th member that is part of the Geneva Act 1999 of the Hague Agreement Concerning the International Registration of Industrial Designs, and the 74th member of the Hague Union.
Term of industrial designs
The term of protection for an industrial design is five years from the date of filing. The protection may be renewed every five years for a maximum of 25 years from the filing date, as long as applicable fees are paid based on article 36 as amended in 2018:
Article 36. The registration of industrial designs shall have a term of 5 years, starting from the filing date of the application, renewable for successive periods of the same duration until a maximum of twenty five years, subject to the payment of the renewal fee.
The industrial design registrations and their renewals will be published in the Gazette.
The use of industrial designs and the limitation of the rights conferred on the holder as a result of their registration shall, where appropriate, be governed by the provisions of Articles 22 and 25 of this Law.
In Mexico, there was an important reform in 2018 affecting, among other concepts, the protection term of industrial designs, extending it until 25 years from the former 15 years. However, industrial designs granted before the reform of 2018 can be extended to 25 years by requesting an extension which must be filed at least 6 months prior to the existing expiration of 15 years.
From the above, such reform made a watershed in the maintenance of designs in Mexico, where firms and applicants have to manage both types of granted designs in different manners: designs under old law with 15 years of protection are subjected to payments of annuities, calculated from the grant date while the designs granted under the new law must pay renewals every five years but counted from the filing date. Moreover, the new law has different fees due on grant: the old law had certificate issuance fees and the first year annuity fees, while the new law has incorporated the first five years of maintenance fees into the grant fee.
Line drawings or photographs
The drawings are the most important element of industrial design application. Every industrial design application must include either graphic (line drawing) or photographic reproduction of the design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete. In practice most of the industrial designs are filed with formal line drawings rather than photographs. There is no restriction on the number of views that may be provided so the applicant can provide as many views as required to sufficiently disclose. It is also required to indicate the type of product for which the design will be used.
Furthermore, it is of importance to take into account that the reform 2018 requires that the title of the design indicates the product to which the design is related. This is based on Article 33, section II. For example, if the designs for a gasket, you must indicate what it’s a gasket for, i.e., car engine or a pipe.
Time for approval
In 2019 the Mexican Institute (IMPI) enabled the full online platform for industrial designs. Prosecution time has been significantly reduced to around 1 year or even less.
When planning to file a design in Mexico, the following costs should be taken into account: number of pages of your application (specification, claim and drawings) since the base filing fee only includes up to 30 pages of application. There is an excess page fee if your application is more than 30 pages.
The cost for claiming a priority in case the design has been deposited earlier in another country.
Costs for filing responses during the substantive examination phase, within two months after notification date. There is a possibility of an extension period of two additional months which would involve extension fees.
After the notice of allowance there are grant fees, including the certificate issuance fees and the first five years of validity in one single tariff.
Maintenance costs are required every five years. The fee is $172.50 per renewal if you are small entity or $345 if you are other than small entity.
IMPI will extend a 50% discount on some official fees for small entities, universities and independent designers if they are not associated with large companies either through license or assignment. In order to claim this discount you have to furnish a declaration that the applicant is small entity. It is important to notify IMPI of a change of status entity if it takes place during prosecution.
Cost of patent drawings for industrial designs
Professional patent drawings are essential for a successful industrial design. Cost depends on on complexity, turn around, quality etc. With Invention Patent Drawings costs are typically USD 40 to USD 55 per view.
Once the drawings are done you can file application with the help of a patent attorney in Mexico. Costs are typically USD 500-1,000 for the service of filing only.
Fee table for industrial designs
|Industrial Design Filing Fee (up to 30 pages of application)||$ 58.00||$116.00|
|Design Search Fee||N/A, pay as Normal||$ 41.00|
|Design Examination Fee||$ 18.51 per OA substantive response fee||$ 37.02 per OA substantive response fee|
|Post-Allowance Fees||$172.50 per renewal||$345.00 per renewal|
Mr.Ivan has worked on many industrial designs, one example is ID55257, some drawings used in this industrial design are found below:
Once issued, your industrial design is valid for five years from the filing date, which can be renewed every five years by paying the post-allowance fee up to 25 years. You can submit professional drawings or color photographs. Total fees for a small company will be around $ 980 USD for the life term of the design. In addition there are the costs for a patent attorney and for the patent drawings.