In order to perfect the priority claim of a Mexican Application, sometimes it is necessary to provide the Mexican Institute of Industrial Property (IMPI) with a certified copy of the priority application, along with its corresponding translation into Spanish. Hence, it is important to know the cases and circumstances in which the completion of this requirement becomes strictly necessary in order not to jeopardize the priority rights.
The legal basis for the priority claim in Mexican legislation is found in Articles 40 and 41 of the Mexican Industrial Property Law (IPL) and Article 36 of its Regulations.
Article 41 of the IPL grants a three-month term from the filing date of the Mexican Application to fulfill the requirements of the International Agreements, the IPL and its Regulations.
Article 36 of the Regulations states the obligation of providing, within three months after the filing date of the application, a certified copy of the claimed priority applications and their translation into Spanish language, if applicable.
However, to determine the cases in which it is required to provide the IMPI with a certified copy of the priority application, it is necessary to refer also to the International Agreements involved. That is, the Stockholm Act of the Paris Convention for the Protection of the Industrial Property and the Patent Cooperation Treaty (PCT).
The provisions of the Stockholm Act of the Paris Convention for the Protection of the Industrial Property related to the matter (Article 4D(3)), state that the countries of the Paris Union may require any person making a declaration of priority to submit a copy of the application previously filed. The copy, certified by the authority which received such application, will not require any authentication and may be filed without fee at any time within three months from the filing date of the subsequent application. In addition, the countries of the Paris Union may require it to be accompanied by a certificate of the same authority showing the filing date and the corresponding translation.
Likewise, the related provisions of the PCT (Rule 17.1) state that a certified copy of a priority application must be submitted to the WIPO International Bureau or to a PCT Receiving Office transmitted or obtained no later than 16 months after the priority date. Any copy received by the WIPO International Bureau after the expiration of such deadline, but before the date of international publication, shall be deemed as received on the last day. In other words, that provision states the obligation of providing certified copies of priority applications to the WIPO International Bureau or to the PCT Receiving Office during the International Phase. However, it does not include the obligation of providing certified copies of priority documents to the designated/elected offices.
In case the copy of the priority application was not submitted, transmitted or obtained, or said submission was made after the deadline, any designated Office may disregard the priority claim. Nonetheless, no designated Office may disregard the priority claim before giving the applicant an opportunity to provide the priority document within a time limit, reasonable under the circumstances (Rule 17.1 (c)).
In conclusion, relating to Mexican applications prosecuted by the Stockholm Act of the Paris Convention for the Protection of the Industrial Property, the Mexican IPL and the International Agreements, it is compulsory to provide, within the three following months from the filing date of the application, a certified copy of the priority application and the corresponding translation into Spanish language to the IMPI, in order to duly claim a priority
Regarding applications prosecuted by the Patent Cooperation Treaty (PCT), there is no obligation to comply with that requirement during the Mexican national phase, unless the certified copy of the priority application had not been received, transmitted or obtained by the WIPO International Bureau or the PCT Receiving Office within the prescribed term of the international phase. In that case, the Mexican practice dictates to exhibit that document to the IMPI within three months after the entry into the national phase.
For that purpose, the Notification Concerning Submission, Obtention or Transmittal of Priority Document form PCT/IB/304 is essential, since it indicates whether the certified copy of the priority application was received or obtained in compliance with rule 17.1 (a), (b) or (b-bis).
In any case, if the requirements of the Mexican IPL and the International Agreements are not met within the deadline, the application will continue its normal course, but the priority claim will be disregarded and the IMPI will issue an official communication indicating this fact. Of course, any publication released between the non-recognized priority date and the legal date will become part of the state of art.
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.