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According to article 52bis of the Mexican IP Law (in force from September 17, 2010) it is possible to file a formal observation brief before the Mexican Institute of Industrial Property containing documents and arguments surrounding the patentability of an invention claimed in a patent application within a term of six months from its publication in the Official Gazette.
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.
"the strategy for answering observations filed by a third party against patentability should be defined on a case-by-case basis considering the technical merits of the arguments."
On the other hand, the convenience of filing an answer to the observations filed by a third party before receiving a first official technical action from the IMPI depends on the particulars of the case.
For example, if the observations filed by a third party correspond to arguments filed in a foreign proceeding that has already been overcome, it could be convenient to file an answer to those observations before receiving an official objection to accelerate the prosecution and try to go directly to the notice of allowance. As another example, if the observations of the third party are new regarding other foreign proceedings but they are not considered relevant, it could be better to wait and see if the IMPI decides to take them into account.
Therefore, the strategy for answering observations filed by a third party against patentability should be defined on a case-by-case basis considering the technical merits of the arguments and the international prosecution history of a patent application.
Mariana Gonzalez is a technology manager at Becerril, Coca & Becerril. She can be contacted at: firstname.lastname@example.org
Mariana Gonzalez, Becerril, Coca & Becerril, IMPI, Mexican IP Law, patent application prosecution, Official Gazette,