Mexico: All in the details
In Mexico, 2022 has been an active and interesting year in terms of IPRs: new laws, new forms of rights protection, new treaties signed, but also some complexities especially with pending projects which the people in the field look forward to in 2023.
The post-pandemic recovery of the Mexican Patent and Trademark Office (MPTO) and other government offices as well as the courts has been underway, and making up for the delays has not been an easy task, but every effort has been made and the results are palpable. At an MPTO level, delays in examination have decreased despite the historical lack of personnel and the changes that were required due to the implementation of the new 2020 law, the Federal Law for the Protection of Industrial Property (FLPIP), although there is clearly some room for further improvement. The lack of the new Regulations to the 2020 law has certainly not helped and this is one of the major pending topics that has to be dealt with urgently.
In terms of patent and design prosecution, two major topics have marked 2022: divisional applications for cases granted under the former law; and complexities associated with the implementation of the Hague Agreement in the field of designs.
Voluntary divisional applications
For more than 25 years, Mexico’s patent framework was defined by the Law of Industrial Property Law (LIP). It was abrogated by the FLPIP, which entered into force on November 5, 2020. However, the LIP continues to be applied for the prosecution of patent applications filed before said date.
While the current law clearly defines the deadline for filing voluntary divisional applications, the LIP did not. In practice, the Mexican Institute of Industrial Property (IMPI) allowed the filing of voluntary divisional applications before the original application was denied, withdrawn, or abandoned, or before it was granted, that is before paying grant fees after receiving a notice of allowance.
Some applicants challenged the above criterion and, as result, court decisions were issued. In 2016, a Federal Court ruled that in view of the silence of the LIP regarding the deadline to file voluntary divisional applications, following the pro homine principle they could be filed any time. On the other hand, in 2020, another Federal Court issued a contradictory decision indicating that such deadline is the end of the substantive examination of the original application. As a consequence of these contradictory decisions a jurisprudence has been recently published supporting the second criterion.
As it can be seen, the jurisprudence departs from the IMPI’s practice as the end of the substantive examination could be interpreted as the date of issuance of the notice of allowance, meaning that, under the jurisprudence, voluntary divisional applications cannot be filed before paying grant fees. Interestingly, the FLPIP does allow voluntary divisional applications to be filed after the receipt of the notice of allowance and before paying grant fees.
The IMPI is not bound to follow the jurisprudence and it might continue to allow voluntary divisional applications to be filed after the notice of allowance is issued for cases being prosecuted under the IPL. Nonetheless, courts are to enforce the jurisprudence. Therefore, the jurisprudence has created uncertainty for all voluntary divisional applications filed after the issuing of the notice of allowance of the parent application in case of a future attack by third parties.
”Under the new law, penalties, fines and even prison are possible for infringers who illegally reproduce, copy, imitate and appropriate cultural heritage without consent or proper authorisation.”
Industrial designs
As for industrial designs, Mexico adhered to the Hague Agreement on June 6, 2020. After more than two years, the time has come for some cases to arrive at the examination stage.
Some applicants are surprised by being issued with provisional refusals citing their own published priority document. This happens when the priority claim is not recognised. Apparently, many users of the Hague system are not completely familiar with the formalities needed for priority recognition in Mexico. However, said recognition might be denied due to at least one of the following reasons:
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