IMPI

What can be registered as a patent, as an industrial design and as a utility model?

 

An invention can be registered under the legal definition of a patent, being any human creation that transforms matter or energy for people’s benefit and to satisfy their needs. Patentable inventions must meet patentability requirements: must be novel, result from an inventive step, and must be industrially applicable. Products and processes receive protection under a patent.

 

The industrial design legal definition registers industrial drafts (combination of shapes, lines or colors that describe an industrial product with ornamental purposes, giving it a unique and original appearance) and industrial models (all three-dimensional shape that serves as prototype or template for the manufacture of an industrial product, giving it a special appearance without implying any technical effect). To be registered, industrial designs must be novel and have an industrial application.

 

Subject to registry under the utility model legal definition are objects, utensils, devices or tools that, as a modification in their disposition, configuration, structure or form present a different function regarding its parts, or utility advantages. To be registered, industrial models must be novel and have an industrial application.

 

How is an application elaborated? How is it submitted?

 

A patent application consists of a narrative statement about the invention, examples of how to make it, drawings (if needed) and a claims chapter that includes all items describing the invention, which will describe the object of invention and what parts of it are subject of legal protection.

 

Industrial design and utility model applications consist of a narrative statement, drawings and claims.

 

The application is submitted with the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial) at its central or regional offices by filling the request form and delivering the narrative statement in order to receive a presentation date.

 

Declare or deny that an administrative transgression has been committed in a matter of trade;

 

Impose the appropriate administrative sanction;

 

Order the transgressor to cease and desist from the acts or activities constituting the transgression;

 

Make the potential collaterals available to the affected party, where the aforementioned provisional measures have been adopted;

 

Decide on the lifting or finality, whatever the case, of the adopted provisional measures.

 

How to make a description, claims and drawings?

 

The description must be clear and complete in order to be understood and to guide any person knowledgeable in the invention’s field on how to make it.  

 

Claims must be clear and concise, and must describe the invention’s concept without overlapping with the description contents.

 

Drawings are included when they are needed to understand a description.

 

How does the process work and how long does it last?

 

All, patent applications, industrial design, or utility model registrations must be submitted to the IMPI for processing by the applicant or through a legal agent. The application must be subjected to a formal and a substantive examination. The average duration for a patent process, from the date when the application is submitted until a conclusive ruling is issued (whether a grant or a rejection) goes from 3 to 5 years. For an industrial design, the average duration is 1 year, and 2 years for a utility model.

 

The intentional nature of the act or omission that constitutes the transgression;

 

The transgressor’s financial conditions;

 

The seriousness of the transgression is tied to the commercialization of products or the provision of services; and

 

The damage dealt to those directly affected.

 

By applying for a patent or registry in Mexico, do I gain protection in every country?

 

No; the exclusive rights granted by a patent or an industrial design or utility model registry is a territorial right, obtained only for the country that grants it. To obtain protection in different countries, it is necessary to apply for it in each one of them. After the first patent application, there is a one year period during which to submit an application in another country claiming the original submission date as right of priority, which applies to patents and utility models; for industrial designs, this priority period lasts 6 months.

 

It is possible to process a patent application via the Patent Cooperation Treaty (PCT), of which Mexico is a signatory. This process is carried out by a PCT receiving office. In Mexico’s case, the IMPI operates as a receiving office. The administrative process that includes the examination of substance and the search for prior art is an international process performed under the World Intellectual Property Organization (WIPO); however, the granting of rights (examination of procedure) is of a national nature performed during a national phase, and must be carried out in the industrial property offices of each country where protection is desired, after the administrative process is concluded and the submission enters the national phase, by paying the corresponding fees.

 

How long am I protected under a patent, as an industrial design or a utility model?

 

Protection granted by a patent has an unextendable term of 20 years from the submission date.

 

Protection granted by an industrial design registry has an unextendable term of 15 years from the submission date.

 

Protection granted by a utility model registry has an unextendable term of 10 years from the submission date.

 

How much does the process cost?

 

The cost for a national patent application is $7,577.39 pesos.

 

To submit a patent request via the PCT, the cost is 1,400 Swiss Franks if the application is up to 30-pages long, and 15 Swiss Franks for each page over 30. For PCT applications, a fee must be paid upon entering the national phase for the search and preliminary examinations as required (see costs in IMPI’s webpage: www.impi.gob.mx).  

 

The Sixth and Seventh Headings in the Industrial Property Law and its Regulations;

 

The Federal Civil Procedures Code (Código Federal de Procedimientos Civiles) may act in a supplementary manner where it does not conflict with the aforementioned laws;

 

The Regulations of the Mexican Institute of Industrial Property, published in the Official Journal of the Federation, December 14^th, 1999;

 

The Agreement delegating powers to the Deputy General Directors, Coordinator, Division Directors, Heads of Regional Offices, Division Deputy Directors, Department Coordinators and other Sub-officers of the Mexican Institute of Industrial Property, published in the Official Gazette of the Federation, December 15^th, 1999; and

 

Organic Statutes of the Mexican Institute of Industrial Property, published in the Official Gazette of the Federation, December 27^th, 1999.

 

Does the application protect the invention or designs?

 

The act of applying for a patent or registering an industrial design or utility model is considered an expectation of rights, but the right is obtained until the patent or registry is granted by the IMPI. However, once acquired, the right takes effect from the submission or priority dates accordingly.

 

Can I sue a third party that uses my invention?

 

The rights acquired with a patent or an industrial design or utility model registry include an exclusive exploitation right, determined by the proven claims. If a third party utilizes, manufactures, uses or sells the protected invention, industrial design or utility model, he commits an infraction on the owner’s exclusive rights, who can sue for damages to his rights, only until the patent or registry is granted, but retroactive to the submission date.