PROSECUTION GUIDELINES

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You will find here all the important information about filing trademarks, designs and patents.

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Mexico

GDP:$1,224 BILLION

IMPORTS: $501,840 BILLION

POPULATION: 126,190,788

TOTAL AREA: 1,972,550 KM2

OFFICIAL LANGUAGES: SPANISH

CURRENCY: MEXICAN PESO ($) (MXN)

Local time:
WIPO-administered Treaties:

Contracting Party of the Paris Convention: YES.

Contracting Party of The Hague System: YES.

Applicable Law:

Federal Law under protection of Industrial Property (published in the official Journal on 1st of July 2020), in force since 5th of November 2020

TRIPS

Grace period for filing applications, from disclosure:

12 months.

Multiple design applications -one application for different embodiments-available:

YES, provided that that the different embodiments share the same general visual characteristics (unity of Invention).
However, this is reviewed during the substantive examination stage. If the examiner determines that the embodiments correspond to different designs, even if they share the same visual characteristics, the applicant is required to divide the application.

Formal filing requirements:

Power of Attorney.

Assignment Document.

Priority Document.

Formal Drawings.

Specification.

Claim.

Locarno classification:

YES.

Deferred publication:

Not possible.

Registration Proceeding Outline:

Filing. Formal examination. Publication. Technical examination. Notice of allowance. Renewal

Opposition:

NO.

Nullity proceedings are possible after granting.

Average time from filing to grant:

12 – 18 months.

Term of Protection and Maintenance:

5 years, plus renewal terms of 5 years each, up to a maximum of 25 years.

WIPO-administered Treaties:

Contracting Party of the Paris Convention: YES.

Contracting Party of the Madrid System: YES.

Trade Mark Law in force:

Federal Law under protection of Industrial Property (published in the official Journal on 1st of July 2020), in force since 5th of November 2020

Classification:

Nice classification, 11th edition.

Multiclass Applications:

NO

Registrable trade marks:

All distinctive and graphically representable signs, such as words, names, acronyms, devices, three-dimensional forms, titles of intellectual or art works, names of television or radio programs (as long as the owner of the IP rights of the works grants their written consent), sounds, odours, trade dress and colours. It is possible to claim secondary meaning for trade marks.

Formal filing requirements:

• Power of Attorney: Not necessary

• Priority certificate: Not necessary

• Indication of date of first use or intention of use.

Examination:

Absolute grounds for refusal: YES.

Relative grounds for refusal: YES.

Opposition period:

30 days from publication date.

Average time from filing to grant:

Approximately 8 months, unless any obstacles were raised.

Term of protection:

10 years from the date of granting.

Use requirements:

YES. Cancellation can be requested if the trade mark has not been used for 3 years, counting from the registration date. Partial cancellation is possible.

A Declaration of Use must to be filed for all trade marks (both national and IR-designations) registered after 10 August 2018. The first Declaration of Use has to be filed 3 years from the registration date. A second declaration of use must be filed along with each renewal application.

Renewal terms:

6 months prior to renewal date.

Grace period: 6 months.

Link to Trade Mark Office:

http://www.impi.gob.mx/

WIPO-administered Treaties:

Contracting Party of the Paris Convention: YES

Contracting Party of the Patent Cooperation Treaty (PCT): YES. Due term for entry into national phase: 30 months.

Patent Law in force:

Federal Law under protection of Industrial Property (published in the official Journal on 1st of July 2020), in force since 5th of November 2020

Types of protection available:

Patent of Invention; Utility Model.

First filing requirements with the local Patent Office for inventions made by nationals:

NO

Formal filing requirements:

• Power of Attorney merely signed (no legalization required) within 60 days from office action.

• Assignment document from the inventors merely signed (no legalization required) within 60 days from office action (not required for entry into national phase of PCT applications).

• digital copy or certified copy of priority application within 90 days from filing (not required for entry into national phase of PCT applications provided that PCT/IB304 form is available).

Filing of the patent application in a foreign language:

Accepted. Late submission of the Spanish translation is possible within 60 days from office action.

Substantive examination must be requested by the applicant:

NO

Search report must be requested by the applicant:

NO

Observations by third parties:

YES, within 2 months from publication.

Opposition:

NO

Average time from filing to grant:

3 years

Term of protection for patents:

20 years from filing date.

Term of protection for utility models:

15 years from filing date.

Differences between utility model and patent:

UM suitable for utensils, instruments, tools, apparatus, devices, or any parts or improvements thereof, but not to chemical products, methods or uses; lower threshold for inventive step.

Maintenance:

Payment for periods of 5 years after grant.

Marking of the product with the application/ patent number:

NOT mandatory.

Compulsory licensing:

YES

Link to Patent Office:

http://www.impi.gob.mx/