Much like with the North American Free Trade Agreement, the recently negotiated United States-Mexico-Canada Agreement (USMCA) is set to introduce significant changes to Mexico's IP system. Several legal and administrative changes have already reshaped the patent prosecution landscape, particularly with regard to inventions. Even more changes are expected as the new trade agreement is implemented over the next five years.
The Mexican system for the protection of inventions covers patents, utility model registrations and design registrations.
The administrative changes to the prosecution of invention-related rights started with the Mexican Institute of Industrial Property's (IMPI's) implementation of the so-called 'inventions online' system in 2016, whereby patents could be filed electronically. The main drawback of the system was that filing could be done electronically, but prosecution had to be done on paper (from formalities to maintenance). However, in April 2017 a second version of the system was rolled out which made it possible to file and prosecute electronically in full. The system's implementation necessitated the issuance of decrees governing the rules for electronic systems, including rules for receiving notifications through such a system in order to provide all users with legal certainty.
Inventors can no longer be anonymous
The most significant changes to the IP Law were published on 13 March 2018 and have been in force since 27 April 2018, with complementary reforms issued in May 2018 and enacted in August 2018.
As regards inventors, the law was changed to remove inventors' former right to remain anonymous. The reason for this change is unclear, but as of 27 April 2018, all inventors must be cited in a patent application. Although this provision is generally seen to empower inventors, it remains unclear whether inventors actually want to be mentioned in a patent application and if such an obligation violates fundamental rights. This is inconsistent with copyright law, where authors still have the right to remain anonymous.
Term for submission of information
The term for third parties to submit information concerning patentability requirements has also been amended. The term used to be six months from the date of publication. However, according to the IMPI, the number of submissions was extremely low and it was decided that the term should be reduced to two months from the date of publication. This is the term which currently applies to the submission of patentability information against an application of interest.
Publishing and availability of prosecution history
Another change relates to the publication of certain applications that were not previously published. Design register applications, utility model applications and all divisional applications (ie, patents, design registrations and utility model registrations) filed from 28 April 2018 will be published as soon as possible after the completion of formalities. Such applications were not previously published.
Along with the publication of all applications, another significant change was made whereby the prosecution history of all applications will be made available to the public as of the publication date. This change will make it easier to identify events which occur during the prosecution history of a patent application. Access to such information has changed the way in which patents are prosecuted in Mexico.
The most dramatic changes to the Mexican IP system concern design registration law. These changes aimed to prepare Mexico to become a signatory to the Hague Agreement and clarify certain concepts that sometimes affected the examination of design applications in Mexico.
The current definition of 'novelty' used for design registration applications in Mexico includes the concepts of 'independent creation' and 'significant degree'. These were not expressly defined elsewhere. Further, Mexican law did not provide robust support for examiners amending a design's title to make it more specific.
The definitions of both terms were included in order to match the IMPI's current practice. Further, clearer specifications and limitations for products to be protected by the design register were provided as part of the changes to the IP Law.
Regarding the term of protection, the IP system changed to renewals every five years up to a maximum of 25 years. This contrasts with the former system which was based on annuities of up to 15 years. Prior to 11 June 2018, it was possible to request the voluntary application of the new IP Law to design register applications undergoing prosecution. Granted designs will be renewed if the petition is made prior to the end of the first 15-year period and will be available for two five-year periods.
The biggest change to administrative procedures concerns the official fees for prosecuting patents, design register applications and utility model applications. A new official fee has been added per page in excess of 30 for patents and utility models and for each additional embodiment in the case of designs. Even though the decree that enacted the new fees along with other fees relating to trademarks and new geographic indications was initially confusing, a later clarification issued and in force from August 2018 clarified that the counting of pages for determining the applicable government fees includes only:
- the first two pages of the official format;
- the specification;
- the claims and drawings; and
- sequences of nucleotides or amino acids (if the application is submitted in hard copy).
Notification of office actions
The last change relating to patent prosecution under the new law concerns the notification of substantive examination office actions. According to a reform published in May 2018, notification of office actions and requirements from the IMPI for all published applications, including those of inventions, can be made only through the Official Gazette. Personal notifications will no longer be available for such published files. The first gazette to include these notifications is expected to be issued in late October or early November 2019. The frequency of publication for inventions is expected to be weekly and IMPI officers have said that they intend to issue the patents gazette every week.
Once again, the Mexican IP system has evolved as a result of free trade agreement negotiations. As such, the patent prosecution landscape has changed dramatically in recent months.
The changes are a message from policymakers that there is a firm intention to modernise the Mexican patent system and provide more efficient protection. However, at the same time, the changes have been implemented within a tight timeframe, which has put significant pressure on applicants and patent practitioners.
It is hoped that the remaining changes which need to be made under the USMCA (eg, the changes to patent term adjustments for prosecution or regulatory delays) will be made in a more orderly fashion and further clarify the amendments that have already been made.
More than ever, enlisting patent professionals who have experience prosecuting cases in Mexico will be essential for keeping a patent portfolio in good shape. Continued efforts will need to be made in relation to electronic filing systems in order to perfect the flaws that remain.
For further information on this topic please contact Héctor Elias Chagoya at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email ([email protected]). The Becerril, Coca & Becerril website can be accessed at www.bcb.com.mx.
An earlier version of this article was first published in Managing Intellectual Property in February 2019.
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