Uhthoff, Gómez Vega & Uhthoff, S.C.Uhthoff

How the pandemic accelerated the digital transformation of the Mexican Patent and Trademark Office

For the past decade the digital transformation has reached new levels of importance in all types of businesses, since this represents the adoption of new technologies to transform and simplify processes creating opportunities for major changes in the way we work, live and do business.

Some of the main changes that digital transformation represent are, just to mention some, the concept of going paperless, moving manual or procedural business process to fully online, implementation of IT technologies, use of cloud computing systems, working remotely and allowing the acquisition of products and/or services or complete processes exclusively online.

As part of this digital transformation the urge for organizations to adopt new digital strategies arise, and whit this, new technologies were developed and created. IP offices being the Authority of the IP system were impacted by this digital transformation as well, and the need of adopting new technologies was more of a compulsory rather than optional situation.

Digital transformation is not advancing at the same pace everywhere, but was boosted due to the pandemic, not only companies but also government entities were forced to accelerate this process in order to be able to continue offering products or services, providing information, or in other words, keep the economy going.

Mexican Institute of Industrial Property (known by its Spanish initials as “IMPI” or referenced also as the Mexican Patent and Trademark Office “MPTO”) for the past decade has been trying to keep up with the digital transformation that the world is facing. In 2012 MPTO launched the first on-line platform that allowed users to be able to file trademark applications without having to go physically to the office and this platform was named “Marca en línea” (“Online Trademark” for its English translation); this is in force until this day and is the most used platform implemented by the MPTO. The use of this platform also implies that, an online application will receive online notifications and an online certificate of registration, while on the other hand, paper filed applications will receive everything related to the mark through mail on a paper notification at the address indicated in the application form.

The MPTO did not have any significant digital transformation until August 22, 2019 when they announced a new on-line platform that complimented “Marca en línea” but offering also the service of filing new patent applications online, paying and requesting invoices, consulting notifications directly from the platform without having to wait for a paper notification (in paper filed applications), and finally, access to information about the pending applications. This platform is called “PASE” (Spanish initials for Electronic Services Access Portal), but it was not completely new, since this platform existed at least since 2012 but it was just a form to access a personal account and as compliment of the existing “Marca en línea”.

“PASE” represented the first big step made by the MPTO towards the digital transformation in many years, because it also offered the opportunity of filing new trademark and patent applications by using only an email and a Mexican Unique Population Registry Code (“CURP”), however this was criticized because not only this was excluding legal persons in Mexico, but also foreign applicants, which ultimately meant that these new improvements were beneficial only to Mexicans who had a “CURP”, otherwise, in order to be beneficiaries of this new tool an applicant will still have to be assisted by an attorney (in case of foreign applicants), or to have an advanced electronic signature that is granted by another government entity which only made things complicated for applicants.

Included in “PASE” was a new tool called “Ventanilla Electrónica de Marcas” (or in English “Trademark Electronic Window”) that it was supposed to allow trademark applicants to file responses to provisional refusals online even though the mark was filed in paper; however, this part of the platform was not available when “PASE” launched.

During the pandemic and after being forced to close, MPTO faced the urgency of being able to continue offering services but in order to do so, they would have to make a significant transformation, since the office will have to remain physically closed. The alternative was clear: to accelerate the digital transformation of the Office by taking the path made by “Marca en línea” and “PASE” and use the technology developed for those platforms to come out with new and improved online tools.

MPTO closed due to the pandemic on March 24, 2020, and by May 13, 2020 a new online platform was available named “Oficialía Electrónica de Marcas” (or in English “Electronic Office of Trademarks”), and also, by the same time, “Ventanilla Electrónica de Marcas” which published along with “PASE” since August, 2019 (but not in use), was re-launched.

These platforms along with “marca en línea” allow applicants to file new trademark applications, renewals, declaration of use, assignments, licenses, change of names and addresses, responses to provisional refusals including those derived from International Registrations, oppositions, limitations and transformations, all through an online page and regardless if the trademark was originally filed on paper.

Each of the platforms mentioned above have its own purpose. For instance, “Ventanilla Electrónica de Marcas” works mainly for all of those trademark applications or registrations that were originally filed on paper and these documents will have to be signed in original (wet signature) and then scanned and submitted in a PDF format not larger than 10MB, since strictly it is just like filing in paper or person but through an “online window”. “Oficialía Electrónica de Marcas” is used for filing new Trademark applications other than word, design, word and design, tridimensional or trade dress applications which are included in “Marca en línea”, in other words, is used for non-conventional trademark applications; additionally, this platform is used to file renewals, declarations of use, assignments, licenses and oppositions. Just as for “Ventanilla Electrónica de Marcas”, all documents must come in a PDF format not larger than 10MB, with an original but scanned signature and the corresponding proof of payment.

The launch of these platforms simplified the work that we offer to our clients, and also helped in those cases that due to the pandemic we could not obtain an original Power of Attorney, since even though we must hold the original at all times, it is acceptable to file scanned version.

MPTO also launched an online platform for the electronic management of patent files and applications and is close to launch a new platform for the registry of Power of Attorneys. Also, during the first months of the pandemic, MPTO launched a website called “MARCIA” which is expected to be the successor of the current “MARCANET” which is also a website that contains the MPTO database that is used to check on particular and general information regarding pending, registered, cancelled or dead trademarks, but also allows to conduct phonetical and graphical searches.

In addition to the aforementioned, MPTO is currently developing (and is in its beta stage) a bot also called “MARCIA”. This will allow users of the website to ask questions or request assistance regarding trademarks in general.

In the practice we are noticing that these platforms are making the examination of the marks faster because the use of the same simplifies the steps of having to physically receive applications or other type of requests or procedure, scanned and capture them in the MPTO database to later assign them to the corresponding examiners.

The digital transformation that happened during this pandemic was a necessity that became rapidly a new form of working, doing business and having a better and faster IP system.

We as frequent users of these platforms and being participants of the IP system in Mexico are hoping that the digital transformation shortly extends to litigation, that is not included in any of the current platforms, and being the most important reason why IP Law firms in Mexico are still having to depend on the MPTO and cannot completely move towards a paperless office.

MPTO and all of IP offices around the world need to study emerging technologies to understand how they can help to improve the way they work which ultimately will translate in a benefit as service providers and to keep up with users that are becoming more sophisticated and demand more efficient services through online applications and platforms.

Author: Claudina González

Firm Name: Uhthoff, Gómez Vega & Uhthoff S.C.

Address: Hamburgo 260 Col. Juárez C.P. 06600 Mexico City

Phone Number: +52 55 55 33 50 60

General mail: mailbox@uhthoff.com.mx

Web page: www.uhthoff.com.mx