Mexico is experiencing an overhaul of its intellectual property legislation. On March, 2018, there were important amendments to the provisions regarding industrial designs and geographical indications. On May, 2018, legislation regarding trademarks was significantly modified. An important reform regarding patents and enforcement of IP rights has been announced.

One change that has not received much attention is referred to the Government Fee, and how it is calculated according to the amendment published on April 26, 2018 (Update October 30, 2018: An additional amendment was published on August 7, 2018).

Good news first: The government fee for new patent filings was cut by almost half.

Bad news: Under the new fee, long applications will pay more.

Under the old fee, the number of drawings or claims or the number of pages was not relevant to calculate the government fee. It was the same fee for short applications than for long applications.

The government fee is now calculated according to the total number of pages of the specification, drawings and formal documents (such as priority application, power of attorney and assignment). The flat minimum fee applies only to patent applications with 30 pages or less, considering all the above-stated documents. For every page over 30 pages, the applicant will have to pay between US$4.00 and US$5.00. Amino-acid sequences will not be considered for the calculation of the fee, if the patent application is filed electronically.

Since the only documents to be considered to calculate the government fee are the ones enclosed to the application form, this new way to determine the fee will encourage applicants to file patent applications with the fewest possible number of pages: more figures might be included in each page; applicants may prefer filing formal documents (assignment, POA and priority document) and the Spanish translation of the specification and claims at a later stage after the filing of the application (English uses fewer words than Spanish and rules regarding letter size and margins apply only to the Spanish translations. Don’t be surprised if a 37 pages long specification in English results in a 56 pages long Spanish translation).

(Update October 30, 2018: A further amendment to the Government Fee published on August 7, 2018, set some rules to clarify how to calculate the amount of the government fee due in a patent application: 1. Only the official application form, specification, claims, abstract and drawings shall be considered to calculate the number of pages of the application, thus, the amount due; 2.  The government fee should be calculated based on the Spanish text or Spanish translation of the specification, claims, abstract and drawings. This means that the amount paid when filing the patent application might not be final if the specification, claims and/or drawings were filed in English or any other language different than Spanish.  As I stated above, English uses fewer words than Spanish, so most likely the application will have to make an additional payment when filing the Spanish translation).

In spite of the changes to the rules regarding the government fee, the Mexican Patent and Trademark Office did not include a definition of small entity, as a general concept applicable to domestic and foreign small entities. Instead, the rules provide a reduced rate to inventors, universities, government research entities and “micro y pequeñas industrias”, as defined by the Mexican Ministry of Economy.

The definition of “micro” and “pequeñas industrias” is stated in the “Ley para el Desarrollo de la Competitividad de la Micro, Pequeña y Mediana Empresa”[1] or Act for the Development of Competitiveness of Micro, Small and Medium Businesses. The act refers and governs Mexican businesses only. Therefore, the reduced fee for “small entities” does not refer to foreign entities, regardless the size. Applicants from abroad should be careful when claiming “small entity status”, even if the Mexican Patent and Trademark Office currently accepts the small entity claim. The courts might not be that flexible.

[1] See Diario Oficial de la Federación, December 30, 2002; amended in Diario Oficial de la Federación, June 6, 2006; August 5, 2011; January 18, 2012;  January 21, 2015; December 1, 2016; May 19, 2017.