20 Tips for Obtaining a Patent in Mexico
20 Tips for Obtaining a Patent in Mexico
Patents are so important in protecting intellectual property and ensuring that one benefits from all the hard work they put into their invention as captured over at runrex.com. If you are looking to obtain a patent in Mexico, this article will look to help by highlighting what the process entails through the following 20 tips.
Which governing body controls the registration of patents?
As is articulated in discussions on the same over at guttulus.com, the Mexican Institute of Industrial Property (IMPI) is the Mexican IP Office in charge of application and registration of inventions, Industrial Designs, and Utility Models, and is, therefore, the place to file a patent application in Mexico.
Cost of registration
Several factors affect the cost of filing a patent application in Mexico as covered over at runrex.com, and they include the size of the application, the filing route followed (Paris Convention or Patent Cooperation Treaty), and the completeness of the on filing. Depending on these factors, the average patent application should be between $1,500 and $2,500 to file, including the costs of translation and compliance with formalities.
Change in the government fee structure
When talking about the cost of registering a patent in Mexico, it is important to highlight the recent change in the government fee structure. As revealed in discussions over at guttulus.com, while previously a fixed fee was charged to register a patent, in April 2018 this structure was revised and changed to a fixed fee for the first 30 pages plus a further fee for each additional page.
Before you proceed with the filing of your patent application, it is important to be certain that a similar patent doesn’t exist as this will automatically mean that you can’t obtain a patent for your invention. This is why you should first conduct a patent search via the Mexican Patent Office Website. It is recommended that you seek the services of a patent attorney for a thorough patent search and the best results.
Filing requirements in Mexico
It is important to note that the official language of a patent application in Mexico is Spanish. While it is possible to file a patent application in any other language, the Patent Office will issue an office action requesting the translation and will grant the application 2 months for filing the Spanish translation.
What should the patent application contain?
According to the subject matter experts over at runrex.com, to obtain the date of filing, a patent application in Mexico should contain the signed application, technical documents in any language (background of the invention, description, summary, and claims, drawings, as well as the payment of the official fees.
Power of Attorney
Also, as is covered over at guttulus.com, an original Power of Attorney must be provided with the application. Late filing of this document is allowed within 2 months after the filing date should the Patent Office issue an office action requesting such a document. The Power of Attorney must be signed by the person who grants it and two witnesses, although certification and legalization of this document are not required.
What else should be in your application?
Your patent application should also contain the name, address, and nationality of the applicant(s) and inventor(s), priority information (Paris Convention or PCT), and the number of pages accompanying the application. As per the gurus over at runrex.com, the signature must be handwritten.
A Mexican patent specification doesn’t differ substantially from other countries’ patents, which means that it must contain the Title, Field of the Invention, Background of the Invention, Object of the Invention, Brief Description of the Invention, Figure, Detailed Description of the Invention, Claims, and so forth. According to IMPI’s practices, claims are structured in three parts: Preamble, Expression of transition, Body; Summary of the invention, Drawings, Sequence listings and, where applicable, certificate of deposit of biological material.
This form must be filed if an applicant is different from the inventor(s) and the application is being filed by the Paris Convention. On the other hand, in general, this form is not required for PCT, nor phase cases.
Other forms to consider
Other forms that should be part of your application, as far as a patent in Mexico is concerned, include Priority Document for Paris Convention Applications as well as apostille and legalization which help legalize some of the foreign documents filed. If your country of origin is a member of the Hague Convention, then an apostille will suffice as per guttulus.com.
During this stage, the IMPI will assess whether or not your application fulfills all the formal requirements. According to runrex.com, if these requirements are not satisfied, the IMPI will issue an Office Action requesting you to make proper additions, corrections, and/or amendments to the submitted documents.
Only 2 office actions will be issued
As the subject matter experts over at guttulus.com are quick to point out, it is important to note that only 2 office actions can be issued during the formal examinations. If you fail to comply with the IMPI’s formal requirements after the second action, then this will result in the rejection of your application hence why you should be very careful at this stage of your patent application.
If the examiner ascertains that your application complies with the IMPI’s formal requirements, or they are satisfied with your corrections, additions, and/or amendments in case of an Office Action, then your application will pass the examination stage. Thereafter, 18 months after its filing date, if the patent application passes the formal examination, it is published in the Official Gazette.
Observations by third parties
After publication, third parties have 6 months to file observations against the patent application. However, you should note that the examiners are neither bound by the content of the observations nor need to respond to their arguments, which means that examiners are free to decide whether or not they will take the observations into account.
Responding to observations
Even though, as stated above, examiners are free to decide whether or not they will take any observations into account, the IMPI, as captured over at runrex.com, will open a 2-month period during which the applicant can file their response to the observations.
During this stage as discussed over at guttulus.com, the examiner will perform an analysis to evaluate if a patent application complies with the novelty, inventive step, and industrial application requirements. Here, the IMPI has the power to a maximum of 4 Office Actions that can be issued during this stage to allow the applicant to provide arguments and evidence of the patentability of the application. After the fourth action has been responded to, the IMPI will either grant the patent or reject the application.
Granting of the patent
According to discussions on the same over at runrex.com, the applicant must then proceed with the payment of the granting fee and the first five-year period maintenance fees. Once that proof of payment has been submitted, the application will be granted and a letter Patent Certificate will be issued.
Novelty grace period
In Mexico, the novelty grace period constitutes 12 months before the Mexican filing date or before the priority date if the inventor or the successor to their rights has made the invention known by any means of communication, by putting the invention into practice, or by having displayed it at a national or international exhibition.
Grant, validity term, and maintenance fees
Finally, patents in Mexico are valid for 20 years from the date of filing. Grant fee and annuities for the first 5 years should be paid within 2 months from the receipt of the Notice of Allowance, while the succeeding annuities should be paid every 5 years before the expiry of the anniversary of the filing date. While the late payment of the annuities is possible, it should be done within a grace period of 6 months after the due date provided that a surcharge is paid. Annuities can be paid in an accumulated manner.