IMPI drags its heels over PCT priority rights restoration

19-02-2016

Nallely Castillo

Mexico does not apply the following Patent Cooperation Treaty (PCT) provisions on priority rights restoration that were enacted in 2007: the “effect of restoration of right of priority by receiving office” (rule 49ter.1) and the “restoration of right of priority by designated office” (rule 49ter.2).

The Mexican Institute of Industrial Property (IMPI) filed reservations about the application of the legal doctrine “restoration of right of priority” with the World Intellectual Property Office (WIPO). The IMPI, which is both a receiving and designated office, said it does not apply the benefits of rule 49ter.

It is important to mention that Mexico’s legislation on industrial property does not account for the restoration of right of priority doctrine. However, although our legislation is silent about this doctrine, it does not mean that the concept cannot be introduced or is necessarily incompatible with domestic laws.

If we review the subsections g) of rule 49ter.1 and h) of rule 49ter.2, we see that: “If on October 5, 2005 the paragraphs a) to d) and a) to g) thereof were not compatible with the national law applied by the designated office, those paragraphs would not apply in respect of that office for as long as they continued not to be compatible with that law, provided that said office (in this case IMPI) informed the International Bureau accordingly by April 5, 2006.”

"by signing the PCT, Mexico is obliged to modify its national legislation in order to regulate the restoration of right of priority, since this legal concept is now part of the signed treaty."

Consequently, the PCT allows a member state to sign the treaty with reservations. However, the PCT itself tacitly implies that such reservations should not be permanent, but only for the period of time in which the treaty’s provisions are incompatible with national legislation. Therefore, it is imperative that PCT member states, when filing a reservation, work on their national legislation in order to eliminate these reservations in the future.

For instance, the Japan Patent Office withdrew its notification about its national legislation being incompatible with PCT rule 20.8a) and b) on October 1, 2012; the Korean Intellectual Property Office withdrew its incompatibility notification regarding PCT rule 51bis.3.c) on January 1, 2015.

Today, several years after the enactment of the new provisions of this agreement, the IMPI keeps on justifying its reservations over rules 49ter.1 and 49ter.2. The IMPI’s reservations filed with WIPO are unfounded since the same PCT regulations state that the reservations must be filed based on incompatibility with national law, not because of omission. In addition, these reservations should be temporary and with the solid intention of reforming the national law.

Moreover, by signing the PCT, Mexico is obliged to modify its national legislation in order to regulate the restoration of right of priority, since this legal concept is now part of the signed treaty. Otherwise, what would be the purpose of signing an international treaty such as the PCT if its provisions were not applied to their full extent?

Nallely Castillo is an attorney at Becerril, Coca & Becerril. She can be contacted at: ncastillo@bcb.com.mx 

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