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Opposition in the substantive examination in Mexico

The opposition procedure has relatively little time to be implemented in Mexico. This procedure should not be perceived as a threat to the applicants but as a support for Mexican examiners in assessing patent applications.
Until relatively recently, the opposition procedure was something alien and strange in patent prosecution in Mexico. In other countries such as Costa Rica, Guatemala, Peru and Chile, to name a few, it is a resource commonly used to submit any deemed relevant information that the Examiner should have in order to assess the patentability of an invention.

With the entry into force of the amendments to the Industrial Property Law in Mexico in the year 2010, it is now possible for a third party wich has a legal interest, to present arguments and documents to prove to the authority, in this case the Mexican Institute of Industrial Property, that a patent application should not be granted.

Unlike what happens in the European region where the opposition can occur after the grant, in Latin America this resource is submitted before the application is turned to the substantive examination. In Mexico, the period in which any third party may file, it begins with the publication of the application in the Official Gazette and ends six months of the occurrence of the same.

After filing the opposition, the Institute shall notify the applicant who may answer or not the opposition. It is noteworthy to say that the application process is not suspended or it is delayed with the presentation of the opposition and it is also worth mentioning that the mere fact to file an opposition does not give the opponent the right to have access to the docket in question. If the patent is granted, the opponent cannot appeal the decision but he may file a nullity resource to show that the registration was granted improperly and if necessary, to revoke it.

Moreover, although it is true that the third one submitting an opposition may have an own interest in not allowing the applicant to obtain a monopoly on a particular invention and thus have the field clear to market his product, the implementation of this resource must be seen as a support tool for Mexicans examiners.

They will now possess, in addition to examinations made by themselves and those made abroad, with useful information provided by third parties to serve, at one time, to expedite his work and assist in the determination regarding whether an invention meets the requirements of novelty and inventive step.

In conclusion, with the opposition resource is sought that in the field of industrial property there is a democracy in which everyone can express their opinions and if applicable to opine if an invention should be granted, which is extremely beneficial for everyone.

Eder Gutiérrez