New regulations to resolve Applications

Baker & McKenzie

On august 9th, 2004, the Mexican Institute of the Industrial Property (“IMPI”) published in the Federal Official Gazette, a Decree with regulations and criteria for the resolution of various applications before the IMPI (the “Decree”).

The Decree seeks to move forward the applications for registration of patents, industrial designs, utility models, trademarks, and other distinctive signs, and to provide sufficient legal certainty for the applicants to obtain a satisfactory result in their applications.

The matters to emphasize in the Decree are mainly related to the stages of the registration procedure regulated by the Intellectual Property Law (the “Law”) and the Regulations to the Intellectual Property Law (the “Regulations”), from the time of filing the application, until the issuance of the corresponding certificate of registration by the IMPI.

The most significant regulations and criteria of the Decree are the following:

1. At the start of the procedure, when the application is filed, the personnel at the IMPI must review that the applicant complies with each and all of the requirements established in the Law and the Regulations.

2. Regarding the form examination, maximum deadlines from filing and acceptance of the application are established.

During these terms the IMPI may request the applicant to precise, explain, or rectify omissions found in the application, as follows:

	On patents, utility models and/or industrial designs, the deadline for this request is of three months, being possible to issue a second request when the first answer does not fulfill the requirement.
	On trademarks, commercial slogans and/or trade names, the deadline for the request is of four months.

3. Regarding the substantive examination, there are also maximum deadlines in which the IMPI may issue a request for the applicant to comply with the applicable regulations, once the form examination has been approved:

	On patents and utility models, the deadline to issue this kind of request shall not be longer than five years. The IMPI may issue up to four additional requests during this period of time, if it considers that the applicant has not complied with all the applicable requirements.
	On industrial designs, the maximum deadline is of six months. The IMPI may issue up to two additional requests during this period of time.
	In trademarks, commercial slogans and/or trade names, the deadline if of three months.

4. Finally, once the requirements are fulfilled and/or the stages of the registration procedure are approved, there is a maximum deadline for the IMPI to finally resolve the application.

On patents and utility models, the maximum deadline will be of five years.
On industrial designs, the maximum deadline will be of four months.
On trademarks, commercial slogans and other distinctive marks, the maximum deadline will be of six months.

5. It is important to emphasize that, as a result of the deadlines above, there will be a presumption of favorable resolution at any of the stages of the registration procedure, if the IMPI fails to issues any request during the above-mentioned deadlines.

6. On the other hand, the Decree sets out the obligation for the IMPI to ground in law and fact each of its resolutions, notices, and/or requests issued within the registration procedure.

This Decree will start to be effective as of February 9, 2005, substituting the Decree by which are established the maximum deadlines to resolve the applications before the IMPI, previously published in the Federal Official Gazette on December 10, 1996.

By Baker & McKenzie

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