impimexico-director-general-roque620
1 December 2011

An interview with Dr José Rodrigo Roque Díaz

Establishing a social media presence on the Internet is rapidly becoming a must-do for any person, company or organisation looking to communicate with an audience. Mexico’s Institute of Industrial Property (IMPI) has followed suit. In 2010 it set up a Facebook page (search for ‘Instituto Mexicano de la Propiedad Industrial’) and a Twitter account (follow @ IMPI_Mexico) to have direct contact with IP users and communicate IP news and events.

IMPI has attracted approximately 2000 followers on Twitter, compared to the UK Intellectual Property Office’s (UK IPO) 3000-strong following, and the US Patent and Trademark Office’s (USPTO) following of just over 5000.

IMPI Director General Dr José Rodrigo Roque Díaz, who took over from predecessor Jorge Amigo in April, is keen to build an IP culture and raise awareness of IP in Mexico, with the ultimate aim of increasing the number of patents filed by Mexican nationals.

On top of IMPI’s social media presence, the institute has increased its co-operation with other government entities, industry and academia, to promote the benefits of patent filing among Mexican universities and industry.

“ON TOP OF IMPI’S SOCIAL MEDIA PRESENCE, THE INSTITUTE HAS INCREASED ITS CO- OPERATION WITH OTHER GOVERNMENT ENTITIES, INDUSTRY AND ACADEMIA.”

“To compete on a fairly level ground, it is important for companies and inventors in Mexico to make better use of IP,” says Roque. IP protects technological developments and is an “essential ingredient” for maintaining and boosting competitiveness. IP is also an important issue in mergers, acquisitions and technology transfers, he adds. “It is very important for companies and inventors to exploit, to a greater extent, the advantages that the IP system represents in a globalised world.”

Mexican national patent applications used to account for 3 percent of the total number of applications filed. In 2010 that number increased to 6.5 percent because of IMPI’s communication and co-operation efforts, says Roque.

Quality control

While IMPI attempts to convince Mexican nationals to make better use of intellectual property protection, Roque is happy with the recognition that IMPI receives for the quality of its substantive examinations of patent applications, utility models and design registrations. “[IMPI] is recognised internationally for rigorous legal framework as well as for the strict examination criteria that are applied,” says Roque. “We are also recognised because of the competence of our examiners.”

IMPI patent examiners are continually subjected to training activities within the institute, nationally, and abroad “in offices of worldwide relevance in the patent field”, says Roque. These offices include the USPTO, European Patent Office, Japan Patent Office (JPO) and the Spanish Patent and Trademark Office (OEPM). “All of this,” says Roque, “[is] with the objective of strengthening the institute through the re-launched international agenda”.

New examiners undergo one-month introductory courses in which they are taught substantive patent examination and prior art searching, theoretically and practically. Once this course is completed, new examiners are tutored by experienced examiners until they can work independently.

“NEW EXAMINERS UNDERGO ONE-MONTH INTRODUCTORY COURSES IN WHICH THEY ARE TAUGHT SUBSTANTIVE PATENT EXAMINATION AND PRIOR ART SEARCHING, THEORETICALLY AND PRACTICALLY.”

IMPI has also modified its recruitment policy in recent years as it tries to deal with examinations of complex technologies and in complex fields. The institute is putting an emphasis on adequate professional backgrounds in fields like biotechnology, systems engineering, telecommunications, nanotechnology, and software and business methods, when it recruits new examiners.

Patent examination divisions have the support of the Quality and Technical Opinions body at IMPI. This monitors the quality of searching and examination. “It is also in charge of unifying criteria when disagreements arise in a certain technical field about the criteria to follow to evaluate novelty, inventive step or any other of the requirements for patentability,” says Roque.

Pendency times were scrutinised and legislation was enforced in 2005 to make IMPI timetables more efficient. The legislation sets strict deadlines for IMPI’s first response to examination formalities, and limits official actions for a formalities resolution to two. Substantive examinations can involve no more than four official actions without a right being granted or refused.

Nowadays, patents are being granted in 3.5 years on average, designs in one year and utility models in one to three years. IMPI has also agreed to run Patent Prosecution Highway (PPH) pilot programmes with the USPTO, JPO and OPEM. Negotiations are currently underway with the UK IPO for a fourth. Roque says: “These actions have allowed us to decrease the backlog from earlier years and reduce the attention times.”

IMPI not only acts as Mexico’s patent-granting authority, it also acts as the country’s first instance for administrative patent infringement proceedings. As long as one of the administrative infringement actions that are defined in Article 213 of the Industrial Property Law is met, a patent owner can submit evidence to IMPI and initiate proceedings.

Evidence can be gathered using an onsite IMPI inspection. IMPI staff will visit the site where the alleged infringement has taken place and produce a detailed report that will become a part of the administrative declaration to be considered during the IMPI administrative proceedings.

“THE INSTITUTE HAS THE AUTHORITY TO CARRY OUT ACTIONS AGAINST PIRATES AND COUNTERFEITERS WHO INFRINGE THE RIGHTS OF BRAND AND CONTENT OWNERS.”

Roque says: “It is important to mention that this procedure has a number of diverging aspects depending on the type of tests that are offered by the parties. The institute must take into consideration the seriousness of the offence and the nature of the measure solicited by the initiating party, to carry out the necessary measures.”

IMPI decisions rely heavily on Mexican patent law, says Roque, as well as the technical patent opinions that expert IMPI patent officers contribute.

Roque says: “However, we have the clear objective of strengthening the institute. So, we have given ourselves the task of clarifying the base of our decisions, as well as reducing the time of their pronouncing, with the intention of improving the experience that the user of the national industrial property system receives.”

Open brand

Anti-counterfeiting and piracy are being combated in Mexico, and IMPI is doing what it can to help. The institute has the authority to carry out actions against pirates and counterfeiters who infringe the rights of brand and content owners. IMPI can carry out inspections ex officio or at the request of the rights owner, seize merchandise and impose fines through administrative declarations of infringements and if inspection visits are refused.

IMPI also organises joint inspections with different authorities, including customs, the Consumer Protection Agency and the National Commission for the Protection Against Sanitary Threats. Together, these inspections have yielded 231 tonnes of products such as clothing and videos, 54 tonnes of medicine, 14 alcohol storage tanks, 16,462 litres of alcohol, 9200 bottles and 17 arrests.

Roque adds: “A trademark-based project with customs was executed, aiming to provide IP rights holders with an extra tool for the detection of those products that could be infringing their rights and trying to enter the country. Nowadays, there is an initiative for amending the Customs Law on this issue.”

“LEGAL MECHANISMS OF PROTECTION AND REGISTRATION NEED TO BE IMPROVED, AND ONLINE PROCEEDINGS AND MULTI-CLASS APPLICATIONS NEED TO BE INTRODUCED.”

But there is still work that can be done to improve Mexico’s anti-counterfeiting and piracy efforts overall. He says: “IMPI must be strengthened institutionally and at the same time must foster its coordination with other enforcement authorities. The legal framework must be updated in order to achieve more efficient sanctions and harden penalties.”

Roque is keen for changes to be made to IMPI trademark practices that can help to create an environment in Mexico that will encourage brand owners to do business there. The legal mechanisms of protection and registration need to be improved, and online proceedings and multi-class applications need to be introduced, he says.

He adds: “We need to achieve Mexico´s adherence to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. This membership will benefit both national and foreign users, as it would decrease administrative registry expenses and simplify the subsequent trademark formalities.”

Mexico has a new IMPI director general who is open to the idea of intellectual property and understands the on-the-ground effects it can have. He needs to carry out his plans for improving on the institute’s good record in patents, maintain its efforts in tackling counterfeiting and piracy, and work on improving its trademark practices so that brand owners can feel more comfortable when applying for trademark protection.

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