The Industrial Property Law provides for a 12-month grace period to protect an inventor (or the inventor's successor in title) from disclosure of the invention, model or design before legal protection is sought. However, before filing an application, previously disclosed, with the Mexican Institute of Industrial Property, applicants should consider that according to the institute's interpretation of the law, a request for a grace period should be made when the corresponding application is filed. A request is made by completing the relevant section of the writ of application and filing documentary evidence in support. If a party attempts to secure a grace period after the application has been filed, the institute will refuse to allow a grace period and the application will be processed in the normal way without that benefit; nevertheless, the disclosure could affect the invention's novelty and inventive step.

Support for this approach can be found in Article 18 of the law, which states that:

"The disclosure of an invention shall not prevent it from continuing to be considered novel where, within the 12 months prior to the filing date of the patent application or, where applicable, the recognized priority date, the inventor or his successor in title has made the invention public by any means of communication, by putting it into practice or by displaying it at a national or international trade show. When the corresponding application is filed, the confirming documentation shall be included in the manner laid down in the regulations under the Mexican Patent Law."

According to the institute's interpretation of Article 18, the point at which to request a grace period and to file documentary evidence is when the application is filed; therefore, an application for a grace period cannot be legally accepted at any other time. However, Article 50 states that once an application has been filed, the institute is authorised to require the applicant to provide clarification or file documents to make good any omissions. Moreover, Article 17-A of the Federal Law of Administrative Proceedings states that if a writ has been filed, but does not meet certain requirements or include necessary data, the relevant office - in this case, the institute - must make a single, written request to the person in question, requiring that the omission be made good within a fixed term. A process cannot be dismissed on the basis of incomplete submissions if the relevant office has not issued such a request.

Thus, if a prior disclosure date was stated in the filed writ of application, but necessary documentary evidence was not attached, the institute must require the party in question to file the missing documents. The communication to the relevant party must set a date for the documents to be filed; therefore, the right to a grace period may be excluded only if such document is not filed within the term.

Despite the institute's criteria, which specify that a submission for a grace period must be made, and evidence filed, when filing the corresponding application, the Federal Law of Administrative Proceedings can be interpreted to allow an applicant to make good an omission and complete the requirements of a procedure. On this basis, an applicant could request a grace period without filing the supporting evidentiary documents, thereby allowing itself more time to compile them. However, if the prior disclosure date is not declared in filing the writ of application, any attempt to apply for a grace period after the filing date will be rejected.

For further information on this topic please contact Mónica Serrano at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730), fax (+52 55 5263 8731) or email ([email protected]).