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Trademark and Slogan Applications: IP Law amendments

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Amendments to the Regulations of the Mexican Industrial Property Law Industrial Property Area:

Trademark and Slogan Applications Formal Requirements

Due to amendments to the Regulations of the Mexican Industrial Property Law in August 2011, the requirements for Trademark and Slogan applications have been modified as follows:

First Use Date in Connection with Location(s)
This amendment mentions that only if the mark has been used in Mexican Territory the address of an establishment, location or facility can be indicated. If the mark has not been used, no establishment(s) location or facility shall be indicated.

Configuration of Word Marks and Slogans
This amendment establishes that work mark(s) and slogans shall be composed only of words of letters corresponding to the Roman alphabet (A, B, C…), Arabic Numbering (1, 2, 3…), and orthographic symbols which help correctly read the mark ( – , . ‘ ¿? ¡! “ ” …). If marks include other symbols (& # @ \ + …) the Mexican IP Institute will require amending the mark to a Design Mark.

Priority Information on Initial Application will suffice
This amendment allows providing the priority document information [a) Country of Conventional Application, b) Serial Number and c) filing date d) Official Priority Payment] in the initial application, without requiring the submission of a Certified Copy of said original Conventional Application. Further formalities or clarifications in connection with the Priority Information may be required by the Mexican IP Institute, if any.

Patent Prosecution Highway with USPTO

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On February 22nd, 2011, the Mexican Industrial Property Institute (IMPI) announced the establishment of the first Pilot Program for the Patent Prosecution Highway (PPH) with the United States Patent and Trademark Office (USPTO), aiming to expedite and streamline the patent system in Mexico.

The Patent Prosecution Highway (PPH) enables an application whose claims have been determined to be patentable in the Office of First Presentation (OPP) may undergo an expedited review in the Office of Second Filing (OSP) with a simple procedure at the request of the applicant.

As such, each of the Offices win benefits from previous work, avoiding duplication of efforts and speeding the procedure for granting patents, resulting in a reduction in the examination workload and an improvement in quality of patents.

This Pilot Program which became operational on March 12, 2011, provided an expiration date on February 29, 2012. The program was then extended and the current expiration date is August 31, 2012.

In order to enter the PPH program, the original priority application should have already been granted or allowed. A copy of the claims as granted must be submitted, as well as copies of all relevant office actions issued relating to the patentability of the application. A claims correspondence table, showing the relationship between the granted claims and the claims submitted in the Mexican application must also be submitted.

Please note that the request must be submitted before the in-depth examination at the Mexican Patent Office begins. Therefore, once the notification has been received indicating that the application has passed the formal examination phase, the request to enter the PPH should be submitted.

Please contact us if you are an applicant or you represent an applicant that is interested in proceeding with the PPH program in any patent application filed in Mexico, so that we may provide further information.