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Mexico Introduces Provisional Patent Applications: Features, Strategy, and Pitfalls Under Article 105 Bis

Mexico Introduces Provisional Patent Applications: Features, Strategy, and Pitfalls Under Article 105 Bis

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The reform to Mexico’s Federal Law for the Protection of Industrial Property (LFPPI), published in the Official Gazette of the Federation on April 3, 2026, introduces a long-awaited mechanism to the domestic intellectual property system: the Mexican Provisional Patent Application. Enacted under the new Article 105 Bis, this mechanism brings Mexico into alignment with major IP jurisdictions, such as the United States, by providing inventors and companies an agile, cost-effective tool for early-stage patent protection.

Aligning Mexico with Global IP Jurisdictions

Historically, inventors in Mexico faced a rigid choice: wait to file a fully drafted patent application with comprehensive claims, risking lost priority or accidental public disclosure, or rush a complete filing at significant upfront legal and official expense.

The introduction of Article 105 Bis modernizes Mexican patent practice. By offering a low-barrier provisional option, the Mexican Institute of Industrial Property (IMPI) now offers a framework standard in international jurisdictions, allowing applicants to lock in an early priority timestamp while continuing R&D or commercial validation.

Key Features of the Mexican Provisional Application

Article 105 Bis sets out specific rules governing provisional filings:

  • Timestamped Priority: Filing a provisional application secures an official filing date and time from IMPI for the disclosed invention.
  • Minimal Filing Requirements: The application requires only the name of the inventor or successor-in-title and a technical description sufficient to identify the claimed invention. Full formal claims, abstracts, and rigid structural formalities are not required at this stage.
  • Strict 12-Month Conversion Window: Applicants have an unextendabe 12-month deadline from the provisional receipt date to file the definitive, non-provisional application fulfilling all standard legal requirements.
  • No Publication and No Examination: Provisional applications are neither published in the Industrial Property Gazette nor subjected to formal or substantive examination by IMPI.
  • Automatic Abandonment: If the non-provisional application is not filed within the 12-month window, the provisional application is automatically deemed declined without requiring an administrative decree from IMPI.
  • No Priority Chaining: A Mexican provisional application cannot claim priority from an earlier application, nor can it benefit from a prior filing date at IMPI.

Strategic Benefits: Provisional vs. Non-Provisional

Choosing to file a provisional application offers distinct tactical advantages for startups, research institutions, and corporations evaluating new technologies:

1. Securing an Immediate Priority Date

In first-to-file jurisdictions, securing an early timestamp is critical. A provisional application freezes the state of the art as of the filing date, preventing competitors from filing similar subject matter later or blocking patentability through subsequent disclosures.

2. Confidentiality and Non-Publication

Because provisional applications are never published by IMPI, the underlying technology remains strictly confidential. If commercial strategy shifts or the technology proves unviable during the 12-month period, the applicant can simply let the provisional application lapse. Because it was never published, it does not enter the public domain or count as prior art against future filings, preserving the option to maintain the technology as a trade secret.

3. Commercial Testing and Capital Raising

Filing a provisional application allows applicants to legitimately declare “Patent Pending” status. This provides legal protection when pitching to investors, presenting at trade shows, or negotiating licensing agreements without risking loss of novelty.

4. Cash-Flow Deferral

Instead of incurring full patent drafting and official filing fees upfront, applicants can defer these expenses for up to a year while assessing market demand and technical feasibility.

Drawbacks and Risks to Avoid

While advantageous, provisional applications carry strategic risks if executed incorrectly:

  • The Inadequate Disclosure Trap: A provisional application only protects what is adequately disclosed in the original filing. If the initial description is vague or incomplete, missing subject matter added later in the non-provisional filing will not receive the benefit of the provisional priority date, exposing those elements to intervening prior art.
  • Unforgiving Deadline: The 12-month window is strictly non-extendable. Missing the date results in the immediate, automatic loss of the priority date.
  • No Enforceable Rights: A provisional application is merely a placeholder. It cannot mature directly into an issued patent, nor does it grant the right to initiate infringement actions or claim damages.
  • Duplicative Steps: If a non-provisional application is ultimately pursued, the process involves two separate filing steps, slightly increasing total administrative overhead.

To maximize the benefits of Article 105 Bis, provisional applications should be treated with technical rigor from day one. Ensuring that the initial technical description is comprehensive, even without formal claims, guarantees that the priority date solidly protects the non-provisional application filed 12 months later.

Update to Mexican IP Rules: New Two-Office Action Limit for Substantive Examination

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Mexico’s New Two-Office Action Limit for Substantive Examination

A significant shift in Mexican patent practice is now in effect, fundamentally changing how inventors and practitioners must approach the in-depth examination stage. On March 11, 2026, the Mexican Institute of Industrial Property (IMPI) published an amendment to the rules governing response times and procedures for patent and utility model applications.

This update, signed by Director General Santiago Nieto Castillo, is part of a broader national policy focused on administrative simplification and regulatory improvement. For foreign agents and in-house counsel, this means the days of extended back-and-forth negotiations with Mexican examiners are narrowing.

The New Rule: Two Strikes and You’re Out

The published amendment concerns Article 11 of the Agreement for Establishing Response Times for Various Procedures Before the IMPI. Effective for applications filed on or after March 12, 2026, IMPI has officially capped the number of requirements (office actions) that can be issued during the substantive or “in-depth” examination of a patent or utility model.

Under the new framework, the Institute may issue a maximum of two office actions to allow applicants to clarify, amend, or correct omissions in their applications. Previously, practitioners often navigated up to four rounds of substantive office actions. By cutting this limit in half, IMPI aims to accelerate the path to either a grant or a final rejection. The formalities examination stage still allows for two office actions, typically issued prior to publication of the application.

Transitional Provisions

It is important to note the transitional rules included with the publication:

  • New Applications: Those filed on or after March 12, 2026, are subject to the strict two-office action limit.
  • Pending Applications: Applications filed before this date will be resolved according to the rules in effect at the time of their filing, meaning they may still receive up to four office actions during the substantive examination phase.

Formalizing the Virtual Interview

To balance the reduced number of written exchanges, the amendment formalizes the use of “reuniones telemáticas” (telematic or virtual meetings). This move suggests IMPI is leaning into a more collaborative, “face-to-face” resolution strategy to resolve technical impediments.

  1. Applicant-Requested Interviews: During the in-depth examination, the applicant may request a virtual meeting related to the patent or utility model process.
  2. IMPI-Proposed Interviews: Upon issuing the first substantive office action, the Institute may now proactively propose a virtual meeting to analyze protection hurdles identified in the state of the art.

While virtual interviews were already occurring in practice, their inclusion in the official agreement signals a shift toward using them as a primary tool to overcome objections early. However, practitioners should be aware that the language is somewhat ambiguous regarding whether an applicant is limited to only one such interview per case.

Strategic Implications for Foreign Counsel

Because Mexican law does not currently provide an equivalent to a “Request for Continued Examination” (RCE), the stakes for each response have doubled. If an application does not overcome all objections by the second office action, it will likely face a final rejection. Challenging such a rejection typically requires expensive and time-consuming administrative reviews or court actions.

To navigate this new landscape, consider the following strategies:

  • Front-Load the Prosecution: Treat the first office action response as the most critical filing. Ensure all technical arguments and claim amendments are robust enough to potentially wrap up the case in one go.
  • Leverage PPH and Foreign Work Products: IMPI remains open to considering results from foreign offices. Utilizing Patent Prosecution Highway (PPH) programs can often align the Mexican examination with allowed claims from other jurisdictions, reducing the likelihood of multiple office actions.
  • Embrace the Interview: Given the two-action limit, a virtual meeting with the examiner after the first office action is no longer just an option; it is a vital tool to ensure the second office action is the final step toward allowance.

Looking Ahead

These changes are expected to significantly shorten the pendency of patent applications in Mexico. While the speed is a welcome change for many industries, it places a higher premium on precision and early-stage strategy. By adapting to these rules now, international applicants can ensure their intellectual property rights in Mexico remain secure without the need for protracted litigation. If you want to chat about how to pivot your strategy for these new IMPI rules, feel free to reach out to us at WJB through our contact page.

Keeping Your Mark Alive in Mexico: Use It or Lose It

Keeping Your Mark Alive in Mexico: Use It or Lose It

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So, you’ve secured that coveted trademark registration in Mexico?  Fantastic. That’s a huge win for your brand’s international strategy. But you will have to take extra steps to keep your trademark registration alive in Mexico: the government isn’t content with just paperwork. They want to see your brand in action. Think of your registration as a license to operate, and the price of keeping that license is actual, effective use.

In a move that puts the responsibility squarely on the owner, Mexican IP law emphasizes continuous commercial use of your mark. If you let your brand sit on the shelf for three consecutive years without any activity, you’re risking cancellation. That’s right: non-use can lead to the outright loss of your registration, or even partial cancellation if you’re only using the mark for some of the goods and services you registered it for. The message is clear: once registered, make sure your brand is genuinely working for all the products and services you want to protect within Mexican territory.

This need for genuine use is formalized through a critical piece of paperwork: the Declaration of True and Effective Use. This isn’t a suggestion; it’s a non-negotiable requirement that acts as a check-in with the Mexican Institute of Industrial Property (IMPI).

Here is what you need to know about this mandatory filing:

  • First, for new trademarks granted after August 10, 2018, you must file a Declaration of Use within three months following the third anniversary of the registration date. Missing this deadline is severe—it leads directly to the cancellation of your entire registration. You can’t just shrug this one off.
  • Second, the requirement comes up again every time you renew your trademark, which happens every ten years. The Declaration of Use must be submitted as part of the official renewal application.

The Declaration itself is essentially a sworn statement. It must be signed by the trademark owner or their attorney, and it formally declares that “the mark is in use within the Mexican territory on the following products/services…” You must precisely list the International Class number and the specific goods or services for which your mark is genuinely being used. While this is a time to potentially limit or eliminate goods you are no longer using the mark on, remember that you cannot use this opportunity to add new items to your list. Importantly, you generally don’t need to submit mountains of proof of use unless the IMPI specifically asks for it.

If your trademark protection in Mexico comes through the Madrid System, you have an extra step to remember. The Declaration of Use for the Mexican designation must be filed separately from your normal Madrid System maintenance. It’s an easy detail to miss, but essential to keeping your protection active in Mexico.

Ultimately, maintaining a trademark in Mexico boils down to two simple rules: use your mark consistently and never miss your Declaration of Use filing deadlines. If you keep these two points in mind, your brand’s protection in Mexico will stay strong.

Mexico approves participation in the Hague Agreement, dealing with Industrial Models and Designs

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On January 17, 2020 The Mexican Senate decreed the approval of of the Geneva Act of the Hague Agreement dealing with the International Registration of Industrial Models and Designs. The approval is for an Only Article that states:

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México begins to accept non-traditional trademarks

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The reform of August 10 2018 to the Mexican Industrial Property Law substantially changed the Mexican trademark landscape. Among the most relevant changes brought by this legislative reform, particularly the acceptance on behalf of the Mexican Institute of Industrial Property (IMPI) of non-conventional trademark applications – such as smell and sound trademarks – positions México today at the forefront of innovation. Read More here.

Madrid Protocol (IR) Trademarks – Registered Attorney

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More and more applicants are indicating Mexico as a designated state for their International Registrations under the Madrid Protocol. However, while the process may be harmonized under WIPO, there are still quirks in the Mexican system that applicants should know about. This is what you need to know:

  • You will only receive notification of your first provisional refusal via WIPO. Except for
    provisional refusals, as of August 2018 all notifications are made via the official gazette as per the IP Law amendments. This means that any notification from Mexican IP Institute (IMPI), such as third party oppositions, will only by issued via gazette.
  • Your trademark registration may be granted, but you must use it to keep it. The amended IP Law indicates that a Declaration of Use must be submitted three years after grant. If not, the registration will automatically be abandoned. Evidence is not required, but a sworn declaration must be submitted.
  • Interested in enforcement? Make sure Mexican Customs knows how to contact you. Mexican Customs actively reviews incoming shipments and occasionally flags those that they deem suspicious. Customs then contacts the registered representative to determine whether these goods should be detained or can be forwarded to their final address.
  • Don’t let your trademark be attacked without the opportunity to fight back. Third parties routinely target registered trademarks that are cited against their new applications. Court notifications are typically delivered in person to the Mexican address of the registered representative. Failure to have a representative of Recortd can result in a trademark registration being lost because no one submitted a defense.


All the above issues can be solved by recording an Attorney of Record at the IMPI. Therefore, if you are thinking about designating Mexico for your International Registration, be sure to let your Mexican Attorney know so that we can help you keep an eye on your trademarks.

If you have any questions, please contact us.

The importance of having an attorney on File for Mexican Trademarks

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Mexican Trademark Law does not require trademarks, either applications or registrations, to have an attorney on file. However, this is not recommended as notifications regarding Mexican trademark applications or registrations will be published via the official gazette, as per the amended IP Law that came into effect in August, 2018. In many cases, neither the owner nor the World Industrial Property Organization (WIPO) will be notified directly; the latter applies for International Registrations via de Madrid Protocol.

Due to the fact that some types of notifications require responses within days, such as notices from the customs office, it is recommended that all Mexican trademark applications/registrations have an attorney on file and that said attorney monitor the official gazette for notifications in relation to these cases. The process of adding an attorney on file to a Mexican trademark can take several business days, not taking into account the receipt of an original Power of Attorney document from a client.

We recommend ensuring that all Mexican trademarks and registrations in a client’s portfolio have an attorney on file, even if an application has been granted without objection, in order to avoid any loss of rights due to a missed notification.

If you have any questions, please contact us.

Declaration of True and Effective Use for Mexican Trademarks

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Mexican trademarks registered after August 10, 2018

In view of the amendments to Mexican IP Law, which came into effect on August 10,
2018, all trademark Registrations granted after this date must now submit a Declaration of True and Effective Use three years after Registration is granted in order to maintain protection of the trademark. Please note that this applies to all Registrations granted after this date, as opposed to Registrations filed after this date

Renewals

As per the same amendments, a Declaration of True and Effective Use must be included with all trademark renewal applications. The Declaration of true and effective use format is included within IMPI’s official renewal form.

For both cases, new registrations and renewals, the declaration of true and effective use form must be signed either by the trademark owner or the attorney on file on the owner’s behalf, and includes the trademark owner’s declaration that “the mark is in use within the Mexican territory on the following products/services…”. Also, the International Class number and all goods/services for which the mark is effectively being used must be declared. Please note that while goods may be limited (or eliminated), it is not possible to add goods to this list. Additional proof of use is not required unless requested by the IMPI.

Please contact us if you have any questions.

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