A modernisation drive in Mexico

30-11-2016

Hector Chagoya

A modernisation drive in Mexico

Elnur / Shutterstock.com

In the past 20 years Mexico’s IP office has been making it easier for IP owners to use services online, but there is still some way to go before the office is completely paperless, says Hector Chagoya of Becerril, Coca & Becerril.

Despite the Mexican Institute of Industrial Property (IMPI) undertaking great efforts to make local IP offices more widely available in Mexico, the office’s reach is still geographically limited. The need for electronic tools to be available to people living in small or faraway communities has become apparent as industrial property awareness seems to have increased in the Mexican business community. Things seem to be changing for the better.

In 1998, two free databases based on IMPI’s official gazettes for patents and trademarks were launched—they were the pioneers of IMPI’s electronic platforms servicing the public. Further tools were developed, such as a database linked to IMPI’s internal trademark systems and another database for identifying patents that were not filed in Mexico.

The next big step in this field took almost a decade: the implementation of the Electronic Gazette System. This system included PDF images (processed via optical character recognition) of all official gazettes issued in print in the recorded history of trademarks and patents in Mexico. In addition, a limited set of granted patent file wrappers was made available electronically for the first time.

Meanwhile, advances in the financial world made it necessary to have an electronic system that made it possible to electronically link payments of IMPI services to bank deposits or electronic transfers. The Payment and Electronic Services Portal (PASE) was then put into operation.

The first e-filing tool, Trademarks On-line (TOL), arrived in 2012, and the Designs On-line (DOL) system was launched shortly afterwards. The TOL and DOL systems were not in general use then because of two concerns: a weak legal basis, and system limitations regarding quality and size of uploaded images. 

The intention to have efficient e-filing systems was in the mind of all officers at IMPI but the resources were not as easy to obtain from the federal government. Fortunately, and because one of the strategic goals of the current government is to make all services to the public electronically available, such resources were finally allocated and IMPI was able to work faster on this goal than before.

"it is evident that the need for filing such documents physically in their original form would nullify all advantages of electronic filing."

The existing systems were updated and the scope of the electronic services broadened so that it was technically feasible for almost all the services to be provided by IMPI, with all of them being linked to PASE in order to avoid lack of payment of government fees. 

New rules for e-filing

In March 2016, the biggest step towards a serious change was taken: the issuance of rules for electronic filing, and the launch of the patents and notifications online systems.

The new rules were issued on March 14, 2016, published on March 18, and enacted the day after. The services included in the system are:

  • Requests for information on registers and technology information (patent searching). These services require a user and password given by IMPI through PASE.
  • Filing and acknowledgement of receipt of applications for patents, trademarks (regular, collective, slogans), publications of trade names, design registrations, and utility model registrations. Integrated circuits layouts were the only right omitted, perhaps because of the scarcity of applications. All later prosecutions must be made on paper physically at IMPI premises. These actions require FIEL, an electronic signature administered by the Mexican taxation authorities (SAT).
  • Notifications made during administrative proceedings for all nullity, cancellation and expiry actions of every IP right, all infringement procedures (including for copyright, also handled by IMPI), and famous or notorious trademark procedures. All such proceedings must be initiated on paper at IMPI premises.

In order to have FIEL, the applicant or representative must be registered before SAT for tax purposes. FIEL is an electronic signature system that allows the determination of the exact identity of the person who signs a document electronically. 

Everyone using IMPI’s electronic filing services, including individual applicants, legal representatives of applicants, and IMPI officers acknowledging receipt of documents, must use FIEL. It gives legal certainty and original document character to every piece of electronic information that is signed under the Advanced Electronic Signature Law, particularly under article 7.

In many cases applications must be accompanied by physical documents such as originally signed powers of attorney or assignments, paper-certified copies and the like. But it is evident that the need for filing such documents physically in their original form would nullify all advantages of electronic filing. 

So in that regard, the rules establish that such documents can be provided as an electronic copy and the person using FIEL to provide them is responsible for their authenticity. The same rules establish that IMPI can request the original document at any time, and therefore the applicant and signatory must make sure that the document as filed is available for such a case.

The steps taken by IMPI this year have undoubtedly reduced risks in e-filing services and made their use more attractive for regular and occasional users. High volume users may find it difficult to use the system because information for the applications must be captured on the platform and currently there are no means for connecting to any systems. 

Individual users may find little value in electronic filings because the rest of the prosecution is made on paper and they will have to go to an office where they can physically file further prosecution documents anyway. 

It is expected that by mid 2017 it will be possible to have full electronic prosecution for most, if not all, of IMPI’s industrial property services. The final result has yet to be seen but certainly IMPI is giving firm steps towards its implementation. 

Héctor Chagoya is a partner at Becerril, Coca & Becerril. As director of patents and technology, he is responsible for all of the firm’s patent work, from drafting and prosecution—in Mexico and abroad—to patent litigation and technology transfer activities. He can be contacted at: hchagoya@bcb.com.mx

Hector Chagoya, Becerril, Coca & Becerril, patent, trade names, IMPI, FIEL, PASE, electronic filing, Electronic Gazette System, trademark,

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