The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 27 March 2017

Avoiding objections to claiming priority in Mexico: Standarized presentation of priority data


This Kat is always interested in following up on how national IP offices implement practice recommendations. Against this backdrop, Kat friend, Angélica Domínguez, from Dumont Bergman Bider & Co. in Mexico, has reported on an interesting development on the standardized presentation of priority data.

"On March 2011, the WIPO Handbook on Industrial Property Information and Documentation recommended to National and Regional Intellectual Property Offices to standardize the presentation of priority application numbers in order to identify each application received. The recommended standard would make it possible to link patent families in databases and search system and would thus make it easier for users of patent information as well as for Examiners during the examination process.

The recommendation consisted of standardized priority application numbers to be used for filing abroad under the Paris Convention as follows:
"The country code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, or

“The organization code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, wherein

XX: Two letters country/organization code

NNNNNNN: Serial Number in accordance with the worldwide application and priority format
Until several months ago, the Mexican Patent Office (MPO) had not acted on the WIPO recommendation for patent applications filed under the Paris Convention, with the result that the priority data listed in the national applications were accepted without regard to whether the WIPO recommended standard appeared on each certified copy of priority claimed submitted at the MPO. That meant that no objections or office actions were issued requesting that the priority data should correspond to the WIPO recommended standard.

However, since mid-2016, the MPO has embraced the standard outlined in the WIPO Handbook. As a result, several office actions have been issued requesting amendment of the priority data in accordance with the information disclosed in the priority document.

According to the MPO, the new practice will ensure that priority data contained in patent filings under Paris Convention comply with the WIPO standardization criteria with the resulting benefits as described above. The MPO requires that applications filed in 2016 and thus far in 2017 be amended to follow the WIPO recommended standard and applicants can expect an office action if the priority application number does not follow the standard.

In light of the above, applications filed in Mexico under the Paris Convention should keep these changes by MPO in mind."

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