Change in the practice of Letters Patent in Mexico2 de abril 2019Por:
As explained in other issues, the Mexican Patent Office is changing some procedures.
Our Partner, Octavio Espejo explains the changes in the practice of Letters Patent.
The Mexican Industrial Property Law (IPL) was reformed twice in 2018. Specifically, on the second amendment, the rules for notifications after publication of patent, utility model and industrial design applications were changed. The new provisions also establish that all notices from the patent office including notices of issuance of Letters Patent can only be made through the Official Gazette. In a broad interpretation of this reform, the Mexican Institute of Industrial Property (IMPI) stopped the issuance of printed Letters Patents, and printed Registrations for Utility Model and Industrial Design in order to provide only digital copies of those documents.
The year 2018 was very important for the Mexican IP system. After several years of calm, the most significant reform of the Mexican IP Law after 25 years took place. The first IPL reform was published on March 13th and entered into force on April 27th. In this step, among other things, a full title for the protection of Denominations of Origin and Geographical Indications was included. In addition, the rules for Industrial Designs were completely restructured and new provisions for the publication of patent, utility model and industrial design applications were incorporated.
After a couple of weeks, the second law reform was published on May 18th and came into effect on August 10th. This amendment was mainly directed to Trademarks, including the requirement to submit a declaration of use, the rules for non-traditional trademarks and certification trademarks. Further, in Article 183, one of the last reformed , it was established that after the publication of the corresponding application, all notices for patents, utility models and industrial designs must be made through the Official Gazette for Notifications. Therefore, every office action during substantive examination, notice of allowance, notice of a Letters Patent’s issuance and any other notice from the IMPI must be notified through this means.
The amended Article 183 of the IPL establishes that IMPI “will notify through the Gazette all the resolutions, requirements and other acts related to the prosecution of patents, registers and national publications, and those related to maintenance of rights” with the exception of the files that must be kept as confidential before the publication of the application.
The current plan of our authorities is to publish the Official Gazette once a week through the web site of the IMPI including the basic information of an issued patent, registered utility model or industrial design and providing a link to the complete digital document within the corresponding electronic file in the “ViDoc” system. Consequently, the digital copy of the Letters Patent or of the Registrations will constitute the specimen that the Article 59 of the IPL compels the patent office to issue and provide to the owner of the patent or register.
At this time, it is not clear if the official digital document will have specific security means, watermarks or proofs of authenticity.
Although Article 183 does not precisely recite the Letters Patent (or Registers) within the documents that will be included in the notifications through Official Gazette, the IMPI has interpreted that the notice of issuance could be notified in the Gazette and the full document could be provided by uploading it in the public file in ViDoc. It could be considered that this interpretation is inaccurate but in line with the world trend to turn into digital and manage paperless and virtual offices.
For those romantic readers who prefer paper copies over digital documents, it will not be possible to request a paper print of the Letters Patent or Register. Therefore, the option would be to request certified copies on paper from the pages of the file that contain the Letters Patent or the Register paying some additional official fees.
The IMPI has followed the paperless direction since 2012 when the first version of the e-filing system for Trademarks was launched. After a couple of years, the patent office allowed the e-filing of industrial design applications. At this time, the current version of the “Inventions on Line” system has been in use since April 2017 and allows the complete prosecution of patents, utility models and industrial designs from filing to granting. In parallel, the “Trademarks on Line” system has also improved its functionality.