Intellectual Property Law in Mexico managed by professionals.

For preparing and filing a patent application before the Mexican Institute of Industrial Property (IMPI) based on the provisions of the Paris Convention, we would require the following information:

1. The inventor’s / designer’s full name, address, and nationality.
2. The Applicant’s full name / company name, address, and nationality / country of origin.
3. General information on the invention – Full title of the invention, jointly with the invention’s description, claims, abstract, and drawings or sketches of the invention. (If any)
4. Copy of the Priority document. (Namely, the previous foreign application based on the same subject matter)
   A copy of the Priority document is only required for Paris Convention-based applications, in which case it but must be filed within 3 months starting from the date on which the foreign previous application was filed.
5. Copy of the Assignment document – if the inventor and applicant are not the same person.
   The Assignment document must be signed by the inventor(s), the Applicant / its legal representative, as well as be signed by 2 witnesses.
6. Copy of a signed Power of Attorney, granted by the applicant, and
7. Copy of the Biological Material deposit (If applicable)

For entering the national phase in Mexico of a PCT application, the information mentioned in sections 1)-4) may be obtained with providing the PCT application number, whereas only a Power of Attorney would be required.

The Mexican Federal Law for the Protection of Industrial Property has undergone several modifications, jointly with a recently enacted legal administrative provisions governing the process of both Paris Convention and PCT national phase applications through online filing tools.

The supporting documents required in Mexico for Paris Convention and PCT based applications are not required in original samples nor are required as certified copies anymore.

Based on the above, it is important to consider the following:

• Online applications – all applications (both Paris Convention and PCT national phase applications) are filed online by our Firm, and therefore, scanned copies of all supporting documents are accepted.
• Priority document – this document is no longer required in original nor as a certified copy, but a scanned copy (PDF document file) of this document is more than sufficient, in order to file it within a 3-month term, starting from the date on which the previous foreign patent application was filed, if your application is based on a previous application under the Paris Convention. No priority document is required for PCT national phase applications in Mexico.
• Assignments – a patent Assignment is required for Paris Convention applications, only if the inventor(s) and applicant are not the same person.
  However, no original samples, nor certified copies are required, but a scanned copy (PDF document file) of the signed assignment will be sufficient, if required.
• Power of Attorney – a Power of Attorney is required for both individuals and corporations as applicants.
  Neither original, nor certified copies are required, but only a scanned copy (PDF document file) of the signed Power of Attorney will be sufficient. Furthermore, it does not require any certification by a notary public, nor does it require to be apostilled or otherwise legalized.
  POA for foreign corporations – it must include the number, date, and/or type of legal or corporate document duly attesting the legal powers vested upon the person signing as legal representative for the applicant, the applicant’s and representative’s full name, jointly with the place and date of the document’s execution–, be signed by the applicant or its representative, as well as be signed by 2 witnesses.
• Examination request – No examination request is required in Mexico. Upon approving formal examination, each application will undergo substantive examination (novelty, inventive step, etc.) automatically.
• Translations – our Firm provides translation services, since Mexican law requires submitting all supporting documents in Spanish or translated into the Spanish language.

The process of a patent application in Mexico is resumed in the following stages:

• Initial filing of the application.
• Formal requirement examination – to determine if the application meets all legal and statutory requirements.
• Publication of an extract the application (Official patent gazette) – Upon publication of an extract of the application, interested third parties are granted a 2-month term to file an opposition against the application.
• PPH (Patent Prosecution Highway) and PPG (Parallel Patent Grant initiative) programs – substantive examination of the application may be expedited under the PPH –if the application claims a previously approved application with a foreign patent office with an accelerated examination program with the Mexican patent office— or under the PPG, if the application is based or claims priority on a former approved application before the United States Patent and Trademark Office. (USPTO)
• Substantive examination – to determine if the invention subject of the application meets the main requirements for patent protection in Mexico –novelty, inventive step, and industrial application.
• Official notice of allowance – the examining authority informs that the application meets all substantive requirements for patent protection, and therefore, requests payment of the applicable fees for the issuance of the patent certificate, jointly with the relevant patent maintenance annuities.
• Issuance of the Patent certificate (Letters Patent) – the patent certificate is issued, and then, the patent holder will be subject to payment of the Annuity fees to preserve exclusive rights on the invention.

For easy reference, the patent application process is outlined in the following diagram: