Notification of actions from the Mexican patent office: A dreadful trap.2 de abril 2019Por:
Our Senior Partner Héctor Chagoya explores the new practice regarding the
notification of actions from the Mexican Patent Office.
Changes in the legal framework
Year 2018 left the Mexican patent system an inheritance which consequences are yet to be seen but are not as promising in the patent prosecution arena.
As of 28 April 2018, according with new Mexican IP law provisions all patent, utility model and design applications should be published. As of the date of publication of the corresponding application, all files will be open to public inspection. Because of this change, in the reforms published in May 2018 to the Mexican Industrial Property Law (IPL), the Mexican Institute of Industrial Property (IMPI) succeeded in including provisions so that notification of official communication from IMPI to applicants will be published through IMPI’s official gazette instead of notifying personally or by certified mail.
Although the changes were supposed to be effective from June 2018, the first “Official Gazette with Notifications” under the new law was published on 19 March 2019. The notifications made through this means will have effect on the next working day as of the date of the publication automatically. During the first week after its release, IMPI had been publishing a gazette on a daily basis.
Under the former practice, IP firms which frequently attend the IMPI were generally notified personally at the Mexican patent office (IMPI). Due to the number of firms and volume of cases, every firm established a singular practice for being notified of all its cases with a frequency determined by the firm’s practice in agreement with other firms and with the collaboration of IMPI to make it in an orderly manner. Alternatively, for applicants that did not regularly visit the IMPI, notifications were sent to the address of the applicant as stated in the patent application, via certified mail or through an IMPI's messenger when the address was within Mexico City or in a city where the IMPI has offices. Whenever these means of notification failed IMPI had no other legal means to notify. This is why the law had already been changed to allow IMPI to notify through the official gazette only those notifications that could not be delivered through one of the above described means.
After this last change, notification related to published patent applications will be made only through the official gazette. This means that the official gazette will have to be monitored on a daily basis. This practice started just a few weeks ago after 19 March 2019.
In the case of administrative office actions, the former notification procedure will continue to be applied (personal/mail/messenger notification) because the corresponding patent applications are not published until formalities are complied with.
Only substantive office actions will be notified through the official gazette and will require monitoring. IMPI has also informed agents that a message indicating that a notification for a determined file was published in the gazette will be sent to the e-mail provided in the patent application or latest writ filed. This is, however, not regulated or formal and is intended only to help individual inventors and universities/research centers so that they do not miss their notifications.
Applications filed through e-filing system
Notifications for all applications regardless of the way of filing are supposed to be published in the gazette once the patent application is first published. However, IMPI has said that the notification will be available at the representatives account in advance to publication and that this will also be a way to be notified of office actions. Nevertheless, this is not clear from the law. The current decrees related to e-filing have not been modified.
This practice is still under construction. You should contact your Mexican representative in order to verify that proper steps have been taken to manage these new challenges. The risk of loss of rights is high when systems and practices are not put in place to ensure timely and orderly identification of the office actions. There are still doubts regarding the constitutionality of this kind of notification and its compliance with the general law applicable to communications from administrative authorities like IMPI. However, the cost of restoring a case based on these apparent flaws will be high as opposed to the cost of preventing the loss of a case for failure in monitoring and identifying an issued office action notification. To verifify the firms’ capabilities of monitoring the gazette is of the essence now more than ever.
Regarding e-filing, given the uncertainty of implementation on different platforms, the recommendation is to consider monitoring every possible way of notification and to take the first notification made available to us through any means as the legal date.
The unintended and unconsidered consequences of this legal change have not yet arrived, but in the meantime, extreme caution should be exercised in order to avoid loss of rights.