Mexico: "How To Take Advantage Of Article 54 Of The Mexican Law For Facilitating The Allowance Of Mexican Patent Applications"

Last Updated: 17 March 2003
Article by Heriberto López Padilla

Most Read Contributor in Mexico, November 2018

Perhaps many times the foreign and national applicants have asked themselves if within our legislation there is a legal resource to expedite the allowance of Mexican applications.

In this sense, and taking into consideration that all the international treaties that are signed around the world comprise a particular chapter related to industrial property, it is obvious that Mexico cannot be behind, because this fact would be in detriment of the image shown by our country during the last years with respect to its industrial and commercial growth.

The appropriate and reliable system of industrial property in Mexico has permitted that international treaties, which are extremely important for the development of our country, such as NAFTA and GATT/TRIPS, have reached their consolidation.

Consequently, the so rigid position adopted by our authorities since many years ago in aspects related with the prosecution of patent applications, had to be necessarily modified. Thus, said authorities have opened their minds and are now in the best disposition of advising and helping applicants in practically any aspect related with patent matters.

In our opinion, an important benefit emanated from said aperture is the possibility of permitting that those patent applications filed in Mexico with a recent date of presentation, but having their corresponding patent issued by a foreign examining office can be promptly examined.

Although in the Mexican Industrial Property Law (MIPL) a particular system for obtaining a fast grant patent is not included, if it is considered, on the one hand, that Article 54 of our law states that the Mexican Institute of Industrial Property (MIIP) may accept or request the result of the substantive examination or its equivalent carried out by foreign patent offices, or as the case may be, a simple copy of the granted patent by any of said foreign offices, and on the other hand, that the criteria employed by our authorities to evaluate the patentability of the inventions coincide with those employed by some foreign offices, particularly the USPTO and EPO Offices, it is possible to take advantage of what said Article stipulates in order to try to expedite the prosecution of those cases falling under the above situation.

Therefore, if the matter contained in a Mexican patent application corresponds, or is modified according to the granted claims in a U.S. or EP patent, a prompt examination of the case can be asked for in order to considerably reduce the prosecution and allowance time periods. The same consideration is applied for utility model applications filed in Mexico.

However, the following two conditions required by our authorities in order to proceed with the substantive examination of the cases should be complied with:

a).- The application must be already published in the official gazette issued by the (MIIP).

b).- The set of claims of the Mexican application must be strictly conformed according to the claims granted in the corresponding foreign patent (U.S. Patent or European Patent exclusively) by means of a voluntary amendment. It is to be noted, however, that if additional claims to those granted in the foreign patent appear in the new set of amended claims, the application will not be examined.

By virtue of the above and in view of the fact that the average time to obtain a patent in Mexico is from about four to six years, it is clear that applicants have now real possibilities of reducing the granting time of a patent and enjoy of the benefits allowed by said patent in a relatively shorter time.

In this way, and taking into consideration that we are living in an age of commercial aperture and technological challenges, it can be concluded that not only the applicants should be considered as winners with the new criteria adopted by our authorities, but also Mexico, since it will be able to be seen as an attractive and safe country for those potential generators of new technologies.

There is no doubt that the aperture and good disposition shown by our authorities will breathe applicants to protect their inventions in Mexico and at the same time will permit us to serve you better.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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