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Notification Of Actions From The Mexican Patent Office: A Dreadful Trap

Author:Mr Héctor Chagoya
Profession:Becerril Coca & Becerril

Changes in the legal framework

Year 2018 left the Mexican patent system an inheritance which consequences are yet to be seen but are not as promising in the patent prosecution arena.

As of 28 April 2018, according with new Mexican IP law provisions all patent, utility model and design applications should be published. As of the date of publication of the corresponding application, all files will be open to public inspection. Because of this change, in the reforms published in May 2018 to the Mexican Industrial Property Law (IPL), the Mexican Institute of Industrial Property (IMPI) succeeded in including provisions so that notification of official communication from IMPI to applicants will be published through IMPI's official gazette instead of notifying personally or by certified mail.

Although the changes were supposed to be effective from June 2018, the first "Official Gazette with Notifications" under the new law was published on 19 March 2019. The notifications made through this means will have effect on the next working day as of the date of the publication automatically. During the first week after its release, IMPI had been publishing a gazette on a daily basis.

Former practice

Under the former practice, IP firms which frequently attend the IMPI were generally notified personally at the Mexican patent office (IMPI). Due to the number of firms and volume of cases, every firm established a singular practice for being notified of all its cases with a frequency determined by the firm's practice in agreement with other firms and with the collaboration of IMPI to make it in an orderly manner. Alternatively, for applicants that did not regularly visit the IMPI, notifications were sent to the address of the applicant as stated in the patent application, via certified mail or through an IMPI's messenger when the address was within Mexico City or in a city where the IMPI has offices. Whenever these means of notification failed IMPI had no other legal means to notify. This is why the law had already been changed to allow IMPI to notify through the official gazette only those notifications that could not be delivered through one of the above described means.

New practice

After this last change, notification related to published patent applications will be made only through the official gazette. This means that the official gazette will have to be monitored on a daily basis. This practice started just a few weeks ago after 19 March 2019.

In the...

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