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.

FOR FURTHER INFORMATION ON THE CONTENT OF THIS NEWSLETTER, PLEASE CONTACT:

Abraham Díaz

Abraham Díaz

Partner

Abraham Díaz “adds value for clients with diverse portfolios as a result of his tripartite copyright, trademark and unfair competition expertise,” according to World Trademark Review’s WTR 1000. He co-chairs OLIVARES’ Litigation Team, as well as Data Privacy and IT Industry groups and has a wealth of knowledge across all areas of intellectual property (IP), with a focus on litigation, copyright, trademarks, unfair competition, licensing, prosecution and opposition matters. He also counsels clients on trade dress, product configuration, advertising, false advertising, trade secrets, plant breeders’ rights, vegetal varieties; right of publicity; Internet and digital environment related issues, IT and Data Privacy matters.
Alejandro Luna Fandiño

Alejandro Luna Fandiño

Partner

Alejandro Luna joined OLIVARES in 1996 and being made partner in 2005, he has been instrumental to the firm´s IP Litigation, Regulatory and Administrative Litigation practices. He co-chairs the Life Sciences & Pharmaceutical Law industry group and coordinates the Litigation Department.
Armando Arenas

Armando Arenas

Partner

Armando Arenas joined OLIVARES in 2000 and became a partner in January 2017. He has experience working on a range of IP matters, including consulting and litigation on trademark, patent, unfair competition, trade dress protection, and misleading advertising cases before the Mexican Institute of Industrial Property (IMPI), Federal Court of Tax and Administrative Affairs (FCTA), Federal Circuit Courts (FCC) and the Supreme Court of Justice (SCJ) Regulatory Affairs and Public Acquisitions.
Daniel Sánchez

Daniel Sánchez

Partner

Daniel Sanchez joined OLIVARES in 2000 and became a partner in 2011. He is one of the leading intellectual property (IP) and administrative litigators in Mexico and is recognized by industry rankings and publications.
Gustavo A. Alcocer

Gustavo A. Alcocer

Partner

Gustavo Alcocer manages the Corporate and Commercial Law Group at OLIVARES, advising domestic and foreign businesses and the owners of those businesses on Mexican and cross-border corporate and commercial transactions.
Sergio L. Olivares Sr.

Sergio L. Olivares Sr.

Partner

Sergio L. Olivares Sr. joined OLIVARES in 1987 and today leads the firm with strength and a commitment to transparency, client satisfaction, and personal service. He has been a partner since 1994 and Chairman of the Management Committee since 2009.

WHO CAN BE FOUND AT THE FOLLOWING NUMBER:

+52(55) 5322 3000
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