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03 June 2019
In 2018 the Industrial Property Law underwent its most substantial reform in 25 years by way of two sets of amendments. Among other things, the second amendment changed the rules for notifying the issuance of a patent, utility model or industrial design application. Thus, all notices issued by the Mexican Institute of Industrial Property (IMPI) – including notices of issuance of letters patent – must be published via the Official Gazette (for further details please see "Applicants beware! IMPI's new notification procedure is a trap"). In a broad interpretation of this reform, the IMPI has stopped issuing printed letters patent and printed utility model and industrial design registrations and now provides only digital copies of these documents.
The first set of amendments to the Industrial Property Law was published on 13 March 2018 and entered into force on 27 April 2018. Among other things, these amendments introduced a section on the protection of denominations of origin and geographical indications. In addition, the industrial design rules were completely restructured and new provisions for the publication of patent, utility model and industrial design applications were incorporated.
The second set of amendments, which mainly concerned trademarks, was published on 18 May 2018 and came into effect on 10 August 2018. Among other things, these amendments introduced:
Further, the revised Article 183 (which was one of the last articles to be reformed) established that the 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 files that must remain confidential until an application's publication. Therefore, every office action must be notified through this means, including:
At present, the IMPI is planning to publish the Official Gazette once a week on its website. This will include basic information regarding issued patents and registered utility models and industrial designs and provide a link to the complete digital document in the ViDoc system. Consequently, digital copies of letters patent and registrations will constitute the documents that the IMPI must issue and provide to patent owners or registrants under Article 59 of the Industrial Property Law. It is unclear whether the official digital document will have specific security measures or watermarks or other forms of proof of authenticity.
Although Article 183 does not precisely include letters patent or registrations in the list of documents that must be notified through the Official Gazette, the IMPI has interpreted the law as meaning that:
While this interpretation may be inaccurate, it aligns with the global trend of digitisation among IP offices.
Parties that prefer hard copies to digital documents cannot request printed versions of letters patent or registrations. Their only option is to request certified paper copies of the pages of a file that contain the letters patent or registration by paying additional fees.
The IMPI has been moving towards a paperless system since 2012 when it launched the first version of the trademark e-filing system. A few years later, it allowed the e-filing of industrial design applications. Subsequently, in April 2017 it launched the current version of the online inventions system, which spans the complete application process for patents, utility models and industrial designs – from filing to granting. In parallel, the IMPI has also improved the functionality of its online trademarks system.
For further information on this topic please contact Octavio Espejo at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email (firstname.lastname@example.org). The Becerril, Coca & Becerril website can be accessed at www.bcb.com.mx.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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