The COVID-19 pandemic has evidenced the need for an efficient and safe system for the electronic prosecution of patent applications and has forced the Mexican Institute of Industrial Property (IMPI) to make such a system available for applications originally filed in paper format. However, as this article shows, the path to this outcome has not been straightforward.
The first system for filing patent applications electronically in Mexico was launched on 18 March 2016, when an IMPI decree allowed new applications to be filed via the inventions online (IoL) system. This first version of the IoL introduced e-filing for patent and utility model applications and issued guidelines for its use. This system complemented the parallel e-filing platforms for trademarks and designs. The use of the system was limited because it was designed only for filing. Electronic filing for prosecution was unavailable, which diminished the IoL system's usefulness.
It took until 26 April 2017 for IMPI to launch a second version of the system, which allowed full prosecution of patent applications filed through the e-system. The IoL system's scope included the prosecution of patents, utility models and industrial designs, from filing to formal and substantive examination and granting.
At first, there were certain issues with the IoL system which did not allow for general filing. As a result, paper filings continued until 2018, when the system was revamped for a second time. The system improvements did not affect industrial design applications due to the poor quality of uploaded images, but this issue was fixed in early 2020.
Under the IoL system, IMPI accepts digital copies of documents of which the original is usually required – namely:
- power of attorney documents;
- assignments of rights (for Paris Convention applications); and
- certified copies of priority applications.
This significantly reduces the handling and courier service costs for such documents, although IMPI may request originals of documents provided electronically on the IoL system at a later date.
Another initial advantage was that IMPI reduced the time for formal examination of applications filed through the IoL system. However, as the system is now used by many, the formal examination times have become regular and mirror the turnaround times for paper filings.
A third advantage of e-filing is that applications are assigned immediately following the e-signature of a filing number. At first, the so-called 'advanced electronic signature' used by the Mexican taxation services was used as a certified e-signature, but changes to the system in 2019 allowed for the use of e-signatures validated directly by IMPI and the Mexican Secretariat for Home Affairs through personal ID code numbers in an effort to make the system more friendly to rights holders that directly file their inventions with IMPI. Regardless of the e-signature used, an electronic filing receipt is fully recognised as an original electronic document under Mexican law and the assigned application number is digitally stamped on every page of an application immediately after filing.
It is mandatory under the IoL system to pay all government fees before filing and the system does not allow modifications after payment, which means that applications must be completed before signing. In other words, applications cannot be signed unless the government fees have been paid. Previously, the only way to pay via the IoL system was to link an IoL account with a bank account to transfer funds electronically to IMPI with a reference tied to the specific patent application to be filed. Only in early 2020 were 24-hour credit card payments made available. Before that, banking hours were a real concern for urgent applications, which were better filed in paper format as the government fees could be paid in advance during banking hours, with the application filed by email or fax afterwards. Fortunately, the IoL system now accepts credit card payments 24 hours per day, so this is no longer an issue.
As mentioned above, IMPI may require original copies of documents filed digitally in the IoL system at any time. Applicants must make the original documents (including a wet ink signature) of any documents digitally filed available if required. So far, IMPI does not seem to have used this faculty a lot, but not complying with such a request may lead to a loss of rights. In addition, the rules for the acceptance of documents that are digitally signed outside Mexico is unclear under Mexican law; therefore, originally signed documents (wet ink stamped) must be available during prosecution.
Another drawback of the IoL system is that once the process for recording the necessary information and uploading files has been finalised, it is impossible to change said information. If a correction need be made, the process must be started again.
Notification of office actions through Official Gazette and new law
Changes to the Industrial Property Law, which will be abrogated in favour of the new Federal Law for the Protection of Industrial Property on 5 November 2020, provide that the notification of all office actions relating to published patent applications, regardless of whether they are filed electronically, will now be made through the Official Gazette. This means that applicants must monitor the Official Gazette, which is issued once or twice a week in the case of patents.
For paper-filed cases, notifications prior to publication are personally delivered to the IMPI's headquarters or sent by mail to the applicant's address. However, for IoL system cases, notifications are made through the same system, which must be consulted at least every 15 days or on the last day of the month. If not, notifications are made automatically.
Substantive examination of office actions for paper filings are published only through the Official Gazette. However, in practice, some notifications for e-filed applications have been received through the platform, thereby generating confusion as the law does not provide for this means of notification.
E-filing for all pending applications: latest development due to COVID-19
All applications filed before 26 April 2017 had to be made in paper format and most applications were filed in paper format until 2018. Therefore, office actions for such filings also had to be issued in paper format.
The possibility of changing applications originally filed in paper format to electronic applications was considered as part of the 2018 IoL amendments, which stated that IMPI was going to announce the possibility to convert paper files into electronic files.
However, this did not occur until June 2020, when a tool for avoiding the accumulation of paper responses during the closure of IMPI's offices was introduced. Unfortunately, this announcement did not have the intended effect, as IMPI established a government fee for the conversion of files to paper. It also announced this change close to the reopening date of its offices, which negated its usefulness, as the decree requires that where IMPI does not issue the acceptance of a change to an electronic filing, any communication to the office must still be made in paper.
As the COVID-19 emergency continues, IMPI has imposed severe restrictions on the receipt of paper filings by limiting the number of filings per applicant to three. Further, with severe limitations imposed on persons visiting IMPI's offices, the conversion of paper files to electronic files has become a relevant tool for applicants, both in terms of managing the risk that the paper file will not be received and the possibility of continuing an application even if IMPI decides to close its offices again.
Deciding whether to use e-filing
Other than for particular cases, the current and future advantages of the IoL system make it more convenient to file electronically through the e-filing system than previously through IMPI. Further, due to COVID-19, e-filing has become the preferred filing route for new patent applications. As for all applications already filed in paper format in Mexico, the conversion can be made for all cases, which for large patent portfolios implies considerable government fees and a specific request that must be made in the e-filing system by the prosecuting attorney. The advantages of e-filing through the IoL system are evident, but the convenience of converting all portfolio files at once or making office actions flow will depend on each applicant's budget.
