Obtaining Protection in México

In principle, all inventions that meet novelty, inventive step and industrial application requirements are patentable in Mexico. Specific exemptions apply to software and to biological and genetic material as found in nature, as neither would be considered an invention. Furthermore, inventions claiming the following will not be subject to patent protection: 

  1. processes to clone human beings; 
  1. processes aimed at modifying the genetic identity of humans that imply the possibility of developing humans; 
  1. the usage of human embryos with industrial or commercial purposes; 
  1. processes aimed at modifying the genetic identity of animals without medical or veterinary usefulness; 
  1. essentially biological processes to obtain vegetables or animals; 
  1. vegetable varieties or breeds other than microorganisms; 
  1. surgical or therapeutic methods, although Swiss-type claims for these will be allowed; and 
  1. the human or animal body, including partial or total gene sequences. 

Other than the exceptions above, genetic material such as genetically altered cells or isolated DNA sequences, whether natural or mutated, will be considered patentable subject matter provided that it is not covered by any of the above conditions. 

Notably, neither provisional nor continuation-in-part applications are available in Mexico. While it is indeed possible to claim priority rights over applications filed abroad, the applications filed thereon in Mexico will be considered final. Divisional patent applications (also known as divisionals) are available, but a divisional resulting from another divisional will no longer be accepted, unless the examiner specifically accepts this or unless this was specifically requested by the examiner during prosecution. The current provisions governing divisional applications are contained in the FLPIP; however, corresponding criteria or guidelines as to how examiners will determine whether to accept a divisional application originating from another divisional have yet to be made available. 

The notion of novelty is considered rather broadly in Mexico as this concept is recognised as having international scope. Violations that fall within the international scope of the concept of novelty may lead to revocation of a granted patent if an interested party institutes cancellation proceedings against the patent. Although the MPTO has sufficient authority under the law to institute cancellation proceedings ex officio, these are hardly ever filed, as it would be rather difficult to meet the requirements for legal standing. The disclosure of an invention, whether by practising the invention or even through offering the resulting product, does away with novelty, unless an application for the invention is filed within 12 months of the disclosure, in which case evidence of the disclosure is required to be attached to the application (whether this is filed as a non-convention application, or under Paris Convention or Patent Cooperation Treaty (PCT) requirements). The publication of an application for the invention falls outside the scope of the exempted 12-month term and thus destroys novelty. 

One must be conscious of the inflexibility of terms set out in the Mexican legal system, as grace periods or extensions are strictly limited to those contained in the law and do not include extraordinary circumstances or even force majeure. For instance, for the purposes of entry into the national phase of PCT applications, Mexico is a 30-month country. There are no exceptions whatsoever whereby a PCT application would be accepted beyond this term. The same will apply for divisional applications, which are to be filed within four months of the request made by the examiner at the maximum, after which no extensions will be granted. Accordingly, it highly advisable to be mindful of terms as extraordinary extensions (those not specifically contained in the law) are not granted, unless ordered to the contrary by a court of law, which is seldom the case.

Under the law, the submission of prior art is not a requirement, although it is greatly welcomed by examiners. Opposition proceedings have been eliminated in the current law, although examiners are compelled to take into consideration information provided by the applicant in support of the application (perhaps in the form of the grant of a priority application, which may well expedite prosecution in Mexico) or challenging an application by a third party that is exempt from demonstrating sufficient legal standing. Post-grant proceedings in Mexico take the form of a claim for revocation, which can be tried at any given time if the grounds for revocation pertain to:

  1. novelty, inventive step, ineligible patentable subject matter, or sufficiency of disclosure or enablement;
  2. claims that exceed the invention as described;
  3. violations pertaining to legal provisions governing divisional applications;
  4. priority violations;
  5. amendments to the claims in a granted patent that have resulted in broader claims;
  6. subject matter of an invention that falls within the scope of double patenting, and is thus considered to belong to the public domain; and
  7. the grant of a patent to someone other than the inventor.

The final two of these grounds for revocation are not only new to the industrial property system in Mexico but also rather controversial, and they merit specific comment. According to the relevant statute, double patenting refers to a claim for subject matter already claimed, or when the essential technical characteristics of the subject matter claimed represent an ‘insubstantial variation’ of that already claimed, even if the applicant is the same in both claims. A primary problem is to determine what constitutes an insubstantial variation, as subjective interpretations of this term will most likely result in disputes. The grounds for revocation in point (g) above eliminate Mexico’s long-standing first-to-file system, and this is also expected to result in disputes for which there is no case law or jurisprudence available. For the time being, the implementing regulations for the former Industrial Property

Law remain effective, although their provisions will only apply where these do not conflict with the FLPIP. The currently awaited implementing regulations for the FLPIP are expected to provide clarification on the above and many other issues, because although these concepts appear quite clear, without specific rules on how implement them, their bluntness would appear to preclude any substantive changes in practice.

Patents are granted for a 20-year period from the filing date or from the applicable priority date, with no extensions available, unless prosecution of the patent consumes more than five years unreasonably by fault of the MPTO, in which case the applicant will have to request a complementary certificate to compensate for the unreasonable delay. The request has to be filed before the expiry of the term for compliance with the requirements in the notice of allowance, with no extensions available. If the request is found to be acceptable by the MPTO, an extended term of one day for every two days of unreasonable delay will be granted. 

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