Although the consequences of the 2018 changes to the Mexican patent system have yet to be seen, they do not look promising for patent prosecution.
As of 28 April 2018, all patent, utility model and design applications must be published. Thus, as of the date of an application's publication, all files will be open to public inspection. In light of this change, the Mexican Institute of Industrial Property (IMPI) – by way of the amendments to the Industrial Property Law published in May 2018 – has implemented a new system whereby it will issue official communications to applicants through its Official Gazette instead of personally or by certified mail.
Although the changes were supposed to take effect in June 2018, the first Official Gazette with notifications under the new law was not published until 19 March 2019. Notifications made in this manner will automatically take effect on the working day following the date of publication. During the first week following its release, the IMPI published the gazette on a daily basis.
Previously, IP firm representatives which frequently visited the IMPI were generally notified of decisions in person at its offices. Due to the number of firms and the volume of cases, each firm established its own practice for being notified. The frequency of this notification was determined in agreement with other firms and the IMPI in order to ensure that each firm was notified in an orderly manner.
Conversely, applicants that did not regularly visit the IMPI received notifications at the address stated in their application via:
- certified mail; or
- an IMPI messenger when the address was in Mexico City or in a city where the IMPI had offices.
If these means of notification failed, the IMPI had no other legal means to notify applicants. As such, the law was amended prior to the 2018 amendments to allow the IMPI to notify applicants through its Official Gazette. However, this option was available only where the above means of communication had failed.
Following the recent amendments to the Industrial Property Law, published patent applications will be notified only through the IMPI's Official Gazette. As such, the gazette will have to be monitored on a daily basis.
In the case of administrative office actions, the former notification procedure (ie, in person or via mail or messenger) will continue to apply because the corresponding patent applications are not published until the formalities have been complied with.
Only substantive office actions will be notified through the Official Gazette and require monitoring. The IMPI has also informed agents that a message indicating that a notification for a determined file has been published in the gazette will be sent to the email address provided in the patent application or the most recently filed writ. However, this approach is not regulated or formal and is intended only to ensure that individual inventors and universities or research centres do not miss notifications.
Notifications for all applications – regardless of the way in which they are filed – should be published in the gazette on their publication. However, the IMPI has stated that a notification will be made available to representatives before publication, which it claims is another way in which to receive notification of office actions.
However, the above approach is unclear on examination of the law. The current decrees relating to e-filing have not been modified.
The IMPI's new practice is still under construction. Applicants should therefore contact their Mexican legal representative in order to verify that the proper steps have been taken to manage these new challenges. The risk of a loss of rights is high when systems and practices are not implemented to ensure timely and orderly identification of office actions. There are still doubts regarding the constitutionality of this new method of notification and its compliance with the general law applicable to communications from administrative authorities such as the IMPI. However, the cost of restoring a case based on these apparent flaws will be high compared with the cost of preventing its loss due to a failure to monitor and identify issued office actions. Verifying a firm's capability to monitor the gazette is now more important than ever.
As regards e-filing, given the uncertainty of the implementation of different platforms, applicants should consider monitoring all possible modes of notification and take the date of the first notification made available through any means as the applicable legal date.
The unintended and unconsidered consequences of this legal change have yet to be seen. In the meantime, extreme caution should be exercised in order to avoid a loss of rights.
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