Patent Opposition Proceedings in Mexico

Patent Opposition Proceedings in Mexico

Mexican Patent Law was recently amended to include the possibility for third parties to oppose patent applications with the Mexican Patent Office.

Once a patent application has been published in the Official Gazette, any third party may file arguments against the issuance of a patent within the six months following the noted publication of the application. No extensions beyond this term are available.

It is to note that the legal provisions pertaining to the opposition of patent applications can hardly be regarded to have created a formal opposition instance, on the following elementary reasons: i) prosecution of the application will not be stalled and, ii) Examiners are not compelled to consider the arguments and evidence offered by either party to the opposition. Under the exact wording of the law, Examiners may or may not consider arguments / evidence offered. It would seem that the intention of Congress to enter the present amendment was to create a means to assist Examiners during examination, however, without interfering with the standard prosecution of applications in a major form and without creating a burden to Examiners if they were to find opposition arguments to be irrelevant. Under the statute, Examiners are not even under the obligation to address the issues raised in opposition proceedings. The sole obligation of Examiners is to serve the opposition proceedings to the Applicant. Afterwards, the Examiner will decide, at his or her sole discretion if the arguments / evidence offered merit consideration during examination.

Notwithstanding the above, interested parties are to seriously consider the possibility to oppose, however lenient the process, when compelling evidence or argument is at hand to prevent an application from being granted. In practice, Examiners do devote time to submissions with which relevant argument and/or evidence is offered, albeit they have authority to dismiss them without having to meet formalities if they find these are not. Therefore, when Examiners find that argument and/or evidence offered in opposition is relevant to the case, they will not hesitate to take it into consideration, and even to use it to support a rejection.

As far as procedural considerations are called for, the amendment introduces a rather peculiar figure in the form of whoever opposes. The wording of the relevant provisions fails to identify the entity opposing an application as such and refers to it as the “third party”, to further define that such entity is not a legitimate party in the prosecution instance and as such, has no right whatsoever to further appeal decisions or the lack of them that could result from opposition. Therefore, third parties will be left with the only choice to institute cancellation proceedings if the opposition instance failed to provide the rejection of the application.

 

 

Carlos Pérez De La Sierra

No Comments

Post A Comment