INFORMATION REQUIRED FOR THE PRESENTATION OF PATENTS IN MEXICO.
The minimum information required to file a patent application in Mexico is as follows:
A. Name, address and nationality of the applicant;
B. Name, address and nationality of the inventor (s)
C. Title of the invention; and
D. Priority information, country, application number and date of the first deposit, if necessary.
Likewise, the patent application must be accompanied by the following documents:
E. Power (simple signed);
F. Transfer of rights; Y
G. Certified copy of Priority (if applicable)
Remarks of documents required:
The power of attorney must be signed by the legal representative of the applicant and two witnesses.
The transfer of rights must be signed by the inventors and the legal representative of the company that will be the owner of the invention. These documents can be submitted later, without affecting the legal date.
For those applications that claim priority based on the Paris Convention, it will be necessary to submit a certified copy of the priority document. This document must be submitted no later than the third month following the date of submission of the application in Mexico. This certified copy of the priority it is necessary if the application is submitted as a national phase based on the PCT, provided that such certified copy has been submitted to WIPO during the international phase.
It should be noted that Mexico has signed some PPH collaboration agreements with some patent offices. If you comply with the requirements, you can prepare a letter before the IMPI at the end of the opposition period that includes two months after the publication in the official gazette.
During their processing, the applications do not require covering the maintenance payment (annuities), but until they are granted.
The patents in Mexico have a duration of 20 years from their legal date.
The information about the necessary documents needed to submit a new patent application in Mexico according to the Paris Convention is:
Full name of the applicant and the inventor (s).
Full address and nationality of the applicant and the inventor (s).
Formal drawings. The drawings should not contain text / captions, and should not include colors or images.
Power of Attorney Document (attached format), indicating the name of the legal representative and name and full address of two witnesses (in the case of a legal entity). It does not require Notarization or Legalization.
Document of Assignment of rights of each inventor to the applicant, in case the applicant is different from the inventor (attached format) indicating the name, address and signature of the designers no notarization or legalization is required.
Number and date of the foreign application to be claimed as a priority (if any).
Certified copy of the priority document (if any).
It should be noted that the priority document (if any), power and assignment are required by law but are not mandatory for submission and may be exhibited later. The non-extendable deadline to submit the certified copy of the priority that will be claimed is 3 months from the date of filing in Mexico. We require a document of assignment of rights of each inventor to the applicant, in original, its notarization or legalization with Apostille is not necessary. It is important to note that the inventor's data is essential for the presentation so it is impossible to omit the mention of them. The assignment and the power of attorney if they are not submitted with the application, will be required during the examination by means of an ex officio of requirements. This office provides for a period of 2 months that can be extended for another 2 months to give due response to it.
Trademark Law in Mexico:
Legal basis in the Industrial Property Law and its Regulations, in force since June 27th, 1991; last amendment: May 18, 2018.
Mexico is a member of the Madrid Protocol.
Trademark protection is obtained by registration. The right to use a trademark can also be acquired by commercial use; however, this right may be sought during a statutory period.
The general rule of the Mexican IP system is first to file, but in case of litigation or conflict the previous IP use can be enforced against the registration and, therefore, the owner who proves previous use may get the cancellation of the registration before 3 years after final registration of the trade mark which is being challenged.
Nice classification, 11th edition
Trademark Registration Proceedings in Mexico
- The application is filed at the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial) (IMPI).
- A separate application has to be filed for each class.
- Simple signed Power of Attorney with two witness is required. For litigation proceedings, a certified and legalized/Apostilled POA is required.
- The application process comprises an administrative stage (the formal examination) and a substantive stage, which includes the examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive by the Examiner are rejected. Rejections can be appealed with the IP Branch of the Federal Tribunal on Administrative Matters and further appeal on the last available instance with the Collegiate Courts.
- After registration, the trademark is published in the trademarks “Gazette”.
- The processing time from first filing to registration or first office action is approx. 8 to 10 months.
National Opposition Period
As of August 30, 2016, a new opposition system is available. The Trademark Office will publish the trademark applications for opposition purposes within 10 business days from its filing, in the Gazette. Third parties can file an opposition within one month from publication in the Gazette and no extensions beyond this term are available. Oppositions will be published in the Gazette within the following 10 business days.
Closing arguments will be accepted within two days after the disposal of evidence and at the call of the IMPI before a decision is rendered. Examination will resume on completion of the opposition process as oppositions will stay prosecution of the application.
A trademark registration is valid for 10 years from filing date. The registration is renewable for periods of 10 years provided that use of the mark in each of the goods / services covered with the registration had taken place during the preceding three years. A declarationt of “real and effective” use needs to be filed along with the renewal application, together with a description of the specific goods / services upon which the mark is being effectively used.
The declaration of use must be submitted under oath after the three years of the granting date of the trademark registration. If such declaration is not filed within the three-month period after the three-year anniversary of the granting date, the trademark registration will lapse.
Trademark Applications Requirements for Filing Trademark Applications in Mexico.
The requirements for filing trademark/service trademark applications in Mexico are as follows:
1. Full name, domicile and state of incorporation of the applicant.
2. Full domicile where the goods are, or will be manufactured, or where the services are or will be rendered in Mexico or abroad.
3. Date of first use (if any) of the corresponding trademark in the Mexican Republic, indicating day, moth and year. A trademark application may be filed although it has not been used in Mexico. 4. Specific goods or services to be protected under the International Classification. Under Mexican Trademark Law, it is not possible to claim “all the goods/services” of the International classes, but rather you have to specify in detail the goods or services to be covered.
5. Trademark name or device that you wish to protect.
6. If Convention priority is to be claimed, the serial number, filing date and certified copy of the corresponding foreign application on the basis of which Convention priority is to be claimed. The certified copy, together with its literal Spanish translation, must be filed within a non-extendible term of three months counted from the filing date of the Mexican application. Convention priority must be claimed within six months after the filing of the foreign application.
7. A Power of Attorney simple signed with two witness.