COVID-19. Mexican Patent and Trademark Office (IMPI) Update

April 29, 2020

As we previously informed, in view of the contingency measures adopted to prevent the outbreak of the COVID-19 virus, the Mexican Patent and Trademark Office (IMPI) suspended its activities and interrupted terms from March 24 to April 30, 2020, being only possible to digitally sign new Patent and Trademark online applications and online motions related to cases of that nature, prosecuted already on line.

Today, an additional decree issued by IMPI has been published in the Federal Official Gazette, whereby the suspension of activities and interruption of terms has been extended until May 30, 2020.

In light of the above, all deadlines for patent and trademark prosecution falling within March 24 to May 31, will expire on June 1st, 2020. The Industrial Property Law foresees an automatic two-month extension to respond office actions; in those cases, in which the extension is available, the extension term will be calculated as of June 1st and thus, the definitive deadlines will expire on August 3, 2020.

We must point out that although the possibility to file before IMPI motions consisting in responses to official actions related only to trademark matters not online prosecuted exists, through the so called “trademark electronic window”.

Generally speaking, it appears that such alternative does not offer any practical advantage for trademark owners precisely derived from the interruption of terms decrees, and moreover, its effectiveness has not been duly tested.

Lastly, OLIVARES would like to inform that the firm, as well through different Intellectual Property Associations in Mexico have been conducting lobbying efforts to persuade IMPI to enable and implement an emergency window to physically receive all type of motions related to patent and trademark matters not prosecuted online and, litigious matters as well.

As stated in previous decrees, the suspension of activities does not apply to those procedures which are necessary to mitigate the consequences of the pandemic and those related to the release of preliminary injunctions imposed by IMPI during an infringement proceeding.

We will keep monitoring and informing regarding any updates.