JURISDICTION REPORT: MEXICO
OPPOSITIONS IN MEXICO: A NEW REALITY
Héctor Chagoya Becerril, Coca & Becerril, S.C.
Amendments to Mexico’s Industrial Property Law were published in the Official Gazette of the Federation on June 18, 2010, to come into force on September 18, 2010. Te new provisions touch various aspects of patent practice, but one of the most controversial and important changes is a new system for filing submissions to the patent office during prosecution.
Before the changes
Prior to the new changes to the IPL, there were no provisions at all for an opposition-like procedure. However, without a regulatory framework other than the obligation of all administrative authorities such as the Mexican Institute of Intellectual Property (MIIP) to hear and prosecute any petitions received, in practice, anyone was able to ‘inform’ MIIP of relevant prior art or circumstances affecting a determined patent application. Since there was no formality or other regulations required for such a petition, MIIP was obliged to receive submissions of this sort at any time during the process. Even if rejected by MIIP, a copy was made available in the case file. Terefore, even if there was no response from MIIP, a submission would at least draw the attention of the examiner, who would then examine the application in a more comprehensive manner. So the submission would have achieved its purpose.
Even if the arguments were unsuccessful, a nullity proceeding remained available upon patent grant, under Article 78 of the Intellectual Property Law.
The new ‘opposition’ proceeding
Te new proceeding is not an ‘opposition’ proceeding as understood in other jurisdictions. Under the provisions of the new Article 52 bis, any person may submit information to MIIP affecting the substantive requirements of patentability—information that could affect novelty, inventive step, industrial applicability and patentable subject matter. Noticeable enablement and sufficient disclosure are not included.
Te information has to be submitted within six months of the publication date of the patent application. MIIP will be able to reject submissions filed aſter that term, which wasn’t the case with the prior informal proceeding. Te patent office may use the information provided by a third party only to support the substantive examination, and the party submitting the information will not interfere or otherwise become a part of the prosecution proceedings, but remains entitled to use the normal nullity action to attack the granted patent. Another important provision of the new law is that it expressly states that filing observations will not halt the normal prosecution of applications.
www.worldipreview.com
“ UNDER THE PROVISIONS OF THE NEW ARTICLE 52 BIS, ANY PERSON MAY SUBMIT INFORMATION TO MIIP AFFECTING THE SUBSTANTIVE REQUIREMENTS OF PATENTABILITY—INFORMATION THAT COULD AFFECT NOVELTY, INVENTIVE STEP, INDUSTRIAL APPLICABILITY AND PATENTABLE SUBJECT MATTER.”
The uncertainties of the new law
Te lack of consideration of international treaties and of interim or transitional provisions makes many aspects of the new proceedings unclear. For instance, a first interpretation could be that this procedure may be applicable to patents filed on or aſter the date of entry into force, but another possible interpretation is that applicability is based on the publication date. Another great uncertainty is related to international publication under the Patent Cooperation Treaty. Tis is supposed to have the same effect on the rights of applicants in the designated state. Since the Mexican Intellectual Property Law was not amended to include provisions to postpone the effects of publication upon receipt of a copy at MIIP, there is inconsistency with the PCT.
Conclusions and recommendations
Te new system for submitting comments has more drawbacks and restrictions than the former informal system, both for patent applicants and opponents.
For patent applicants, it is important to watch out for submissions aſter publication, analyse the information, and perhaps amend or file arguments voluntarily with the patent office before MIIP issues its objections. As for freedom-of-use analysis, it is now necessary to keep a close eye on Mexican patent applications in order to proactively determine patent applications that could pose a risk and file information material to patentability in due course.
Héctor Chagoya is a partner at Becerril, Coca & Becerril, S.C. He can be contacted at:
hchagoya@bcb.com.mx
World Intellectual Property Review September/October 2010 87
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