PROSECUTION OF INTERNATIONAL DESIGNS IN MEXICO - Uhthoff

PROSECUTION OF INTERNATIONAL DESIGNS IN MEXICO

Industrial Designs constitute the ornamental or aesthetic aspect of an article. In accordance with the Mexican Federal Law for the Protection of Industrial Property (LFPPI), Industrial Designs that are new and susceptible to industrial application will be registrable. In Mexico, Industrial Designs include:

 

1.- Industrial Drawings, which are any combination of figures, lines or colors that are incorporated into an industrial product for ornamentation purposes and that give it its own peculiar appearance.

 

2.-  Industrial Models, which are any three-dimensional shape that serves as a type or pattern to manufacture an industrial product, which gives it a special appearance as long as it does not involve technical effects.

 

With respect to International Designs, on March 6, 2020, the Government of Mexico deposited the instrument of accession to the Geneva Act of 1999 of the Hague Agreement Concerning the International Registration of Industrial Designs, with the General Director of the World Intellectual Property Organization (WIPO).

 

On June 6, 2020, the Hague Agreement for the filing of International Designs came in force in Mexico and from this date, companies and designers in Mexico can use the Hague System to protect their industrial designs and models in the Contracting Parties to the 1999 Act of the Hague Agreement. Now, after three years, an increase has been noted in the number of international applications that designate Mexico.

 

ADVANTAGES OF THE HAGUE SYSTEM

 

·      The Hague System allows up to 100 designs to be protected in more than 96 countries through a single international application.

·      Avoid complex and costly national procedures.

·      Filing an international application in one language, paying one set of fees in a single currency and “dealing with a single IP Office, WIPO”.

·      Plan the publication of the international registration based on the business strategy and request publication only when you are ready to bring the design to the market.

·      A request to modify registration data is automatically applied to all designated contracting parties.

·      Renew international registrations in the contracting parties you wish and for the designs you wish directly through WIPO.

·      Receive electronic communications, at any time and place, either by the owner or his attorney, to be informed of the status of international registrations.

·      Mexican Institute of Industrial Property (IMPI) does not make formal examination to the international applications.

 

An additional advantage of the international designs filed in Mexico is the reduction in the prosecution time, since the Hague Agreement establishes periods for the issuance of the first refusal notification with which the Mexican Institute of Industrial Property (IMPI) cannot take more than 12 months; otherwise, the request will be considered accepted.

 

DISADVANTAGES OF THE HAGUE SYSTEM

 

·      Review the specific requirements of each designated country.

·      When submitting the international application, the designated countries must be chosen.

·      An application cannot be nationalized in a country that has not been designated in the international application.

·      Early publication.

·      Control notifications and deadlines to respond in several countries.

·      Comply with national requirements.

·      Lack of information or confusing information.

 

Another important disadvantage is that during the prosecution of international applications in Mexico, the notifications are communicated to the applicants or agents through WIPO, not to the national agents. Furthermore, the comments on the notifications are issued in Spanish language. Therefore, the agents or applicants must be very aware of these notifications that WIPO sends them, and they must look for a national agent to translate and respond directly to the Mexican Institute of Industrial Property (IMPI) within the fixed term stated by the IMPI. In this regard, we have noticed that the issuance of notifications by WIPO has caused confusion between the agents, since even in cases where a national agent has already been accredited, the notifications are not sent to the national agents, but to the agents who are registered in the international application before WIPO; therefore, this has led to the notifications not being answered within the fixed term, resulting in the abandonment of the application in Mexico due to lack of response.

 

An additional disadvantage is that international applications in Mexico can only receive one refusal notification while applications handled under the traditional system can receive up to two official actions during the substantive examination.

 

EXCEPTIONS AND INCOMPATIBILITIES WITH NATIONAL LEGISLATION

 

Even though the Hague Agreement is intended to facilitate the process by trying to standardize the requirements, what has really been noticed, in the case of Mexico, is that the national requirements are not very clear for agents or applicants, since Mexico has established some additional requirements, so, that international applications comply with the requirements established in national legislation.

 

 

·      In Mexico, the delay of the publication of the international registration will not be available.

·      The unity of invention requirement must be met.

·      It is not clear when a Prior Disclosure must be declared.

·      In Mexico there is no opposition period for applications for industrial designs and models.

 

Other national requirements during the first stage are the presentation of the certified copy of the priority document, which must be accompanied by its Spanish translation, in case the priority document is in a language other than Spanish, additionally, official fees must be paid to the IMPI for each claimed priority. Failure to comply with these requirements will cause the priority(s) not to be recognized and it may affect the novelty of the design(s). These national requirements must be met within a period of three months from the publication in the International Designs Bulletin of International Registration made by WIPO.

 

One of the advantages of international applications is that they can include up to 100 designs in a single application. However, the Mexican legislation establishes the requirement of unity of invention, thus, the main requirement, until now, is to divide the applications according to each embodiment or design, which delays the process and makes it more expensive. In this respect, it is important to mention that until now, divisional applications are submitted directly to the IMPI and follow the normal process of a traditional application.

 

SUBSTANTIVE EXAMINATION

 

During the prosecution of international applications in Mexico, the following procedure established by the Mexican Institute of Industrial Property (IMPI) must be considered:

·      Only a single refusal notification will be issued.

·      The IMPI will notify the applicant through WIPO.

·      The IMPI does not notify the Mexican agent.

·      WPO does not intervene in this procedure.

·      Reasons for refusal:

o   Lack of novelty,

o   Lack of industrial application,

o   If the figures are not sufficient to fully disclose the industrial design or model,

o   Lack of unity of invention,

·      Refusal notifications must be answered directly to the IMPI within a term of two months, which can be extended for two additional months.

·      The IMPI will not refuse the protection of the international registration arguing that the formal requirements were not met, since these are considered satisfied with the examination made by WIPO.

·      Once the response to the refusal notification is reviewed, if the IMPI confirms the refusal of the international registration, it will notify to the applicant in writing, through WIPO, expressing the reasons and legal foundations for its resolution, as well as mentioning the appropriate resources.

·      IMPI may withdraw the refusal, in part or in whole, as a result of additional information or documentation provided by the applicant in accordance with the Agreement.

·      The withdrawal of the refusal will be communicated to WIPO.

 

GRANTING

 

 If the design application is granted, the IMPI will notify the applicant, through WIPO, so that within two months they can proceed with the payment of the final official fees. The applicant or agent of the international application may pay directly to WIPO in Swiss francs only within the first period of two months from the date of notification.

 

The applicant or national agent may also pay the fees directly to the IMPI, in national currency, within the first period of two months, from the date of notification, or within the two-month extension period.

 

If the applicant does not comply with the required payment after the deadline, IMPI will notify the WIPO so that it can annul the effects of the international registration allowed by IMPI, in accordance with the Common Regulations.

 

VALIDITY AND RENEWAL

 

The international registration will be valid for five years from the date of filing of the International Register and will be renewable for successive periods of the same duration up to a maximum of twenty-five years, subject to the payment of the corresponding fees.

 

The fee for renewal of the international registration must be paid directly to WIPO, no later than the date on which it must be renewed.

 

The renewal may also be made within a period of six months from the date on which the renewal of the international registration must be made, subject to the payment of the surcharge corresponding to the grace period, specified in the WIPO Table of Fees.

 

WIPO will inform the IMPI through the International Designs Bulletin about the renewals submitted and the international registrations that have not been renewed, for the relevant purposes in Mexico.

 

International registrations that have obtained recognition in Mexico and their renewals will also be published in the Mexican Official Gazette.

 

The applicant of the international registration may request directly to the IMPI the rehabilitation of the registry, in the terms established by the Mexican Law, subject to the payment of the corresponding official fees.

 

If the rehabilitation is appropriate and the international registration in Mexico is renewed, IMPI will notify to the WIPO for the respective registration in the International Registry.

 

COMPARISON OF THE PROSECUTION OF DESIGN APPLICATIONS

 

 

TRADITIONAL SYSTEM BEFORE THE IMPI

HAGUE AGREEMENT

BEFORE WIPO

BEFORE IMPI

Official fee for filing a new application.

ü

ü

 

Official fee for claimed priority

ü

 

ü

Official fee for each additional embodiment

ü

ü

 

Official fee for the granting

ü

ü*

 

Validity

5 years renewable up to 25 years

5 years renewable up to 25 years

 

Prior Disclosure

ü

 

ü

Character of the assignee

By assignment

By declaration

 

Filing of the certified copy of the priority document

ü

ü

ü

Filing of the Spanish translation of the certified copy of the priority document

ü

 

ü

Form examination

ü

ü

û

Substantive examination

2 official actions

 

1 refusal notification

Extension to respond to official actions

ü

 

ü

Renewal

ü

ü*

 

Rehabilitation

ü

ü

 

License Registration

ü

ü

 

 

* If the extension is used, it is paid to the IMPI.

 

 

REFERENCES

 

̶             The Hague Agreement Concerning the International Registration of Industrial Designs (1999).

̶             Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.

̶             Administrative Instructions for the Application of the Hague Agreement.

̶             ACUERDO por el que se establecen las reglas y especificaciones para la presentación y trámite de solicitudes y documentación conforme al Arreglo de La Haya relativo al Registro Internacional de Dibujos y Modelos Industriales, ante el Instituto Mexicano de la Propiedad Industrial.

̶             Ley Federal de Protección a la Propiedad Industrial.

̶             Reglamento de la Ley de la Propiedad Industrial.

̶             DECRETO por el que se aprueban las Declaraciones del Estado Mexicano al Acta de Ginebra del Arreglo de la Haya relativo al Registro Internacional de Dibujos y Modelos Industriales, adoptada en Ginebra el dos de julio de mil novecientos noventa y nueve.

̶             Guía de uso – Sistema de La Haya relativo al registro internacional de dibujos y modelos industriales. Especificaciones para México.

 

 

 

Janett Lumbreras

jlumbreras@uhthoff.com.mx

 

 

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