Mexico jurisdiction report: Dealing with third party observations
In this sense, it has to be considered that the party providing the information to the IMPI will not be part of the patent application prosecution and the IMPI is free to assess whether the documents and/or arguments are material to evaluate patentability. This is similar to what is known as an “opposition during prosecution” in other jurisdictions, but the Mexican IP Law describes it as a proceeding for “submission of information”. The third party filing observations will only receive a letter from the IMPI acknowledging receipt of them.
When observations against patentability of an invention are filed, the patent application holder will be notified by the IMPI within a short period of time (two to three months) after the six-month term following publication has passed.
In practice, such notification simply states that some documents and/or arguments have been filed, that the patent application holder may file responses to such observations, and that the period of time for doing so ends on the day the patent application is granted or rejected. In other words, there is no obligation at all to answer the observations filed by a third party, as this is something optional for the patent holder and also the IMPI, and there is no specific deadline for filing arguments refuting the observations.
It is important to note that in practice the notification from the IMPI takes place before receiving any official technical action, so the notification of observations is an independent official letter issued during substantive examination and is not considered as an objection from the IMPI. To be able to determine if the filed observations by a third party have been actually considered by the IMPI as relevant for assessing patentability of the invention claimed in the patent application, it would be necessary to wait until the patent application holder receives a first official technical action and its contents are analysed.
Further, the notification from the IMPI just indicates that observations by a third party have been filed, without indicating the name of the person filing the observations and without appending the arguments and documents that were filed. If the patent application holder wants to analyse this documentation, it is necessary to pay for copies and obtain them directly from the IMPI’s premises.
