After going through formal and substantive examinations, patents, industrial designs, and utility models reach to their allowance. At that moment, the hard work for maintaining these registries in force begins.
In order to keep the industrial property rights of the above mentioned legal figures, either annual or quinquennial payments must be entered in the Mexican Institute of Industrial Property (IMPI by its initials in Spanish) so they can remain in force through all their period, which is defined in the Mexican Industrial Property Law.
Current maintenance fees are based on the Fee for Services Rendered by the IMPI, which was published in the Mexican Official Gazette on August 23, 1995, where the General Dispositions read as follows:
GENERAL DISPOSITIONS
FIRST. This Fee will remain in force until the Board of Chairmen of the IMPI approves any modifications to the same, by previous authorization of the Tax Ministry.
The Fees will be paid in the amount and for the concepts defined for every chapter.
The Fees established in this Tariff will be paid in the IMPI offices or in the authorized financial offices.
Overcharges will be paid according to the provisions of the Federal Tax Code.
These fees are compulsory to every user of the Mexican Industrial Property System, either national or foreign.
SECOND. Patent, industrial design, and utility model applications are not subject of annual payments meanwhile the respective Letters patent, industrial design, or utility model are allowed.
When paying the grant fee, it will be considered as paid all the annuities due during the examination of the application, from the filing date until and inclusive the previous calendar year to the date on which the patent or registration is allowed.
At the moment of settling the payment for the issuance of the respective Letters, it will be necessary to also enter the annuity fee corresponding to the current calendar year plus the next four.
The payments corresponding to annuities, will have to be settled in anticipated quinquenniums and for the whole calendar year, independently from the dates of filing of the application, of the respective issuance of the Letters; the expiry date or of the lifeterm of the right. The owner of the patent or registration will be able to pay two or more quinquenniums in advance.
The last payment to be effected for covering annuities will include the remaining year or years of the lifeterm of the patent or registration.
Annuity payments will have to be paid within the month corresponding to the anniversary of the filing date.
THIRD. It will be possible to request that a payment wrongly made, be applied to a different application, patent or registration, when an evident error to the eyes of the Mexican Authorities exists.
Regarding this disposition, it is important to mention that although it is available, this procedure almost never occurs because the IMPI criteria are very strict. The IMPI normally processes payments according to the information in the payment format and rarely considers the possibility of an error occurring when filling the format.
FOURTH. Individuals, small entities, public or private education or academic institutions, scientific and technical research institutes of the public sector, can apply for paying only 50% of the fees on some of the items mentioned in the IMPI tariff.
FIFTH. The VAT (Value Added Tax) tax will be applied to these fees according with the Federal Tax Code and the Federal Tax Law and its Regulations. Actually, this VAT is of 15%.
However, services rendered abroad will be free of the VAT charge according to the Patent Cooperation Treaty (PCT).
It is worth to mention that all these dispositions and fees are in force since September 1st, 1995.
From the above, it can be noted that benefits as Small Entities for individual inventors, small industries, scientific research institutes and academic institutions exist because the payment of annuities is included in the benefit of 50%.
Enterprises that are not consistent with the features above will not be subject to these benefits, but they can choose to pay for the duration of the validity of the patent, industrial design, or utility model in advance.
According to the author, it is unfortunate that this mechanism of settling the payment in whole in advance has not given the expected results. Although the payment of the whole validity period might not reflect in savings in the fees, it does in the excessive administrative burden generated when controlling future deadlines in the present and also in an eventual increasing of the fees.
Thus, it could be useful to take this option in consideration and make an assessment before planning the payment of annuities for a patent, industrial design or utility model application.
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.
