On November 5, 2020, the new Patent Law will come into force in Mexico. This law, in general terms, puts in writing some practices executed by the applicants and patent authorities that were already implemented and incorporates others that will be new and that should be taken into account. In any case, Mexico is becoming a more patent friendly country every day.

The new law should not be analyzed independently from the general vision of the Mexican Institute of Industrial Property (IMPI) which has implemented many electronic tools for applicants to use. This is a path of no return that, in these times of the COVID, has come in handy not only for intellectual property firms but for all those who make use of the IMPI’s services.

In fact, the Director General of the IMPI announced at a nationwide conference the acceleration of the examination of Mexican applications that have equivalents in those offices that are recognized as doing a thorough technical examination, mainly the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO). In fact, in recent weeks there has been an acceleration in the examination of those applications where a result was not expected until next year. This is despite the “COVID factor”.

It should not be forgotten that Mexico has signed Accelerated Patent Program (PPH) agreements with several offices around the world and it is a very good tool to shorten processing times by approximately one year in respect of an application that cannot or does not want to benefit from this PPH.

It should be clarified that the PPH does not ensure an automatic granting of patents, but it certainly creates a patentability scenario for the application once the regulations on the subject have been complied with.

ASPECT TO BE CONSIDERED IN THE NEW LAW

Among the valuable changes in the new law is the extension of the validity of utility models from 10 to 15 years. Mexico is one of the few countries in the world that has this figure of protection. One recommendation for those applicants who have a mechanical or electrical PCT application and who, for some reason, do not meet the requirement of inventive step, is to apply for a Utility Model application in Mexico which, with 15 years of protection, becomes very attractive for these inventions.

This extension of the term of protection for utility models has come hand in hand with the extension of the term of protection for industrial designs from 15 years to 25 years established in 2018.

Another benefit of the new law is the inclusion of more situations to make use of the 12-month grace period for first-time disclosure. For example, it now includes disclosures that were inadvertently or mistakenly made even by a patent office or a third party.

Another advantage of the new law are the certificates of correction of validity. The new law considerates the issuance of certificates of correction of validity for patents that, for reasons attributable to the authority, have been delayed in being granted. The IMPI has not yet issued the rules for these certificates, so it will be very interesting to follow the criteria by which the correction is accepted and the terms of these rules.

OTHER ISSUES TO BE ASSESSED

Double Patenting. Although it has always been the practice of the IMPI to deny two patents for the same invention, this prohibition is now made explicit, and will be the basis for many objections during the technical examination.

Divisional Applications. A common practice for applicants in some situations was to file divisional applications for divisional applications on a voluntary basis. This practice will now be allowed with the explicit authorization of the examiners. It will be a very interesting task for patent agents to persuade examiners to allow divisional applications of divisional applications ( cascade of divisional applications9 during the technical examination.

Inventions of new uses. It has also been written that new uses are patentable, which has already been the case in practice, but always having a support in the law to claim these inventions will make it easier to convince the granting of patents.

Software inventions, therapeutic treatment methods remain unpatentable subject matter as in the current law.

In summary, the Mexican patent office has put in place new regulations, practices and user-friendly tools to speed up the processing of patents and achieve better protection, but special care will have to be taken in divisional applications.