Step by step of an application process for a patent in Mexico

What is a patent in Mexico?

A patent in Mexico is an exclusive right 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 means, 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.

Read more about the step by step process for a patent application in Mexico.

What is the Step by step process on filing a patent application in Mexico?

Step by Step process on filing a patent application in Mexico

Step 1: The application forms. 

Once you file your Patent application, IMPI will start the granting procedure. You should be proactive during this phase and be aware of any incident related to your application in order to rectify any deficiency and answer any official action raised by the IMPI. 

Step 2: Formal Examination.

 IMPI will assess whether or not your application fulfills all the formal requirements, if 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.

Step 3: Publication.

18 months after its filing date, if the Patent application passes the formal examination, it is published in the Official Gazette.

Step 3: Third Parties Observation.

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.

Step 4: 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.

Step 5: Approval and payment or Denial.

Maintenance of the Patent: the applicant must proceed with the payment of the granting fee and the first 5 year period maintenance fees. Once that proof of payment has been submitted, the application will be granted and the Letters Patent Certificate will be issued.

Also, you may need to file a trademark in Mexico.

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 are 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.

Check out the list of required documents to file a patent in Mexico.