The Mexican Institute of Industrial Property (IMPI) is the Mexican IP Office in charge of applications and registrations of inventions, Industrial Designs, and Utility Models, so it’s the place where you have to file a patent in Mexico.
What is a patent in Mexico?
A patent in Mexico is an exclusive rights granted over inventions as far as they are considered:
New, and thus not included in the state of the art. The state of the art comprises everything that has been made available to the public by written or oral description, by use or marketing or by any other mean, prior to the filing date of the Patent application or, where appropriate, the recognized priority date.
Inventive: if, for an expert with average skills in the technical field concerned, the said invention is neither obvious nor obviously derived from the state of the art.
Industrially applicable: when its subject matter can be produced or used in any type of industry. In this context, the industry includes all productive activities, including services.
Some of Mexico IMPI’s 2016 figures:
- Patent applications filed in 2016: 17,413.
- Top 3 Applicants by country: United States (8,262), Mexico (1,310) and Germany (1,153).
- Top EU applicants by country: Germany (1,153), France (594), United Kingdom (319), Italy (301) and Spain (204).
- Patents granted: 8,657.
- Top three technology areas for granted applications: Consumer goods (3,003), Industrial Techniques (1,698) and Chemistry & Metallurgy (1,231).
How to file a patent in Mexico?
- The documents required to file a patent in Mexico are the following:
- a) Patent Application: An official form duly signed which shall include the title of the invention; name, address and nationality of the applicant(s) and inventor(s); a Mexican address to receive official communications from the IMPI; priority information (Paris Convention or PCT); and the number of pages accompanying the application. A signature must be handwritten.
- b) Specification: A Mexican Patent specification does not substantially differ from other countries´ Patents. 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, Examples.
Claims: They define the Patent’s scope of protection –i.e. only the technical features included in this section will be taken into consideration as the protected subject matter-. 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. - c) Power of Attorney: A simple Power of Attorney (per applicant).
- d) Assignment: if an applicant is different from the inventor(s) and the application is being filed by the Paris Convention this form must be filed. In general, it is not required for PCT, not phase cases.
- e) Priority Document for Paris Convention Applications.
- f) Payment: Proof of payment of the corresponding fee.
- g) Apostille or legalization: Some of the foreign documents must be legalized. If your country of origin is a member of the Hague Convention, an apostille will suffice.
All the documents in a language other than Spanish must be accompanied by its proper translation.
How is the Patent process in Mexico?
Once you file your Patent application, IMPI will start the granting procedure. You should be proactive during this phase and be aware of any incidence related to your application in order to rectify any deficiency and answer any official action raised by the IMPI. This process can be separated into 5 stages.
- Formal examination: IMPI will assess whether or not your application fulfills all the formal requirements, these requirements are not duly satisfied, the IMPI will issue an official action requesting you to make the proper additions, corrections and/or amendments to the submitted documents. Only two office actions could be issued during the formal examination, and failing to comply with the IMPI’s formal requirements after the second action will result in the rejection of the application. Therefore, we advise you to be very careful at this stage.
- Publication: 18 months after its filing date if the Patent application passes the formal examination it is published in the Official Gazette.
- Third parties’ observations: Third parties have a 6-month period after publication to file observations against the Patent application; however, the examiners are neither bound by the content of the observations nor need to respond to their arguments. In other words, examiners are free to decide whether or not they will take the observations into account. Notwithstanding the above, IMPI will open a 2-months period during which the applicant can file his/her response to the observations.
- Substantive examination At this stage, the examiner will perform an analysis to evaluate if a Patent application complies with the novelty, inventive step and industrial applicability requirements. It is a process where IMPI has the power to a maximum of four official actions that can be issued during this stage to offer the applicant the opportunity to provide arguments and evidence of the patentability of the application. After the fourth action has been responded, the IMPI will either grant the Patent or reject the application.
- Granting and maintenance of the Patent: the applicant must proceed with the payment of the granting fee and the first five-years period maintenance fees. Once that proof of payment has been submitted, the application will be granted and a letter patent certificate will be issued.
Check out this list of required documents required to file a patent in Mexico.
Some Extra Facts
Novelty grace period
For a patent 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 his 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
Patents in Mexico are valid for 20 years from the date of filing. Grant fees and annuities for the first five years should be paid within two months from the receipt of the Notice of Allowance. The succeeding annuities should be paid every five years before the expiry of the anniversary of the filing date. Annuities can be paid in an accumulated manner.
Duration of the registration procedure
It takes an average of 4-6 years from filing to granting of a patent in Mexico.
Representation by a patent attorney
Foreign patent applicants, need to perform patent prosecution in Mexico through an agent, a registered Mexican patent attorney.
Goytia & Associates has local offices in Mexico and in key cities of the world to ensure the best quality of IP service. Our extensive coverage of +120 countries enables our clients to effectively manage multiple filings and cases through one centralized agent.
Some links where you can find this information and more. In Spanish.
User’s guide to filing a patent and utility model application
Mexican Industrial Property Law
Do you need to file a patent in another country other than Mexico?
This content may suffer modifications due to updates in the official regulations of Mexico.
