28 Oct
2021

Mexico

How do you get a patent in your jurisdiction?

Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?

There are patents and utility models; patents are valid for 20 years and utility models for 15 years, counted from the filing date.

A patent can be obtained with claims relating to:

  • a certain product or process specially devised for its manufacture or use;
  • a certain process, apparatus or means specially devised for its application; and
  • a certain product or process specially devised for its manufacture, or apparatus or means specially devised for its application.

The exclusive right of exploitation of the patented invention confers the following prerogatives on its owner:

  • If the patent is a product, the right prevents others from manufacturing, using, selling, offering for sale or importing the patented product without the owner’s consent.
  • If the patent is a process, the right prevents others from using that process and from using, selling, offering for sale or importing the product obtained directly by means of that process without the owner’s consent.

Q: What inventions are eligible for patent protection in your jurisdiction?

According to the Federal Law on IP Protection, inventions are patentable in all fields of technology that are:

  • new;
  • inventive; and
  • industrially applicable.

The following inventions are also patentable:

  • new inventions or everything that is not in the state of the art;
  • those that are inventive or whose results are not deduced from the state of the art in an obvious or evident way for a person skilled in the art; and
  • those that are industrially applicable.

Q: Are there any specific exemptions to patent eligibility?

Inventions whose commercial exploitation is contrary to public order or that contravene any legal provision, particularly:

  • procedures for cloning human beings and their products;
  • procedures for modifying the germline genetic identity of the human being and its products when these imply the possibility of developing a human being;
  • uses of human embryos for industrial or commercial purposes;
  • procedures for modifying the genetic identity of animals that entail suffering without substantial medical or veterinary utility for man or animal, and the animals resulting from said procedures;
  • plant varieties and animal breeds, except in the case of microorganisms; and
  • essentially biological processes for obtaining plants or animals and the products resulting from these processes.

The above will not affect the patentability of inventions whose object is:

  • a microbiological procedure or any other technical procedure or a product obtained by said procedures;
  • the methods of surgical or therapeutic treatment of the human or animal body and the diagnostic methods applied to them; and
  • the human body in the different stages of its constitution and development, as well as the simple discovery of one of its elements, including the total or partial sequence of a gene.

Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals, medical procedures, etc)?

The following are not considered to be inventions:

  • discoveries, scientific theories or their principles;
  • mathematical methods;
  • literary, artistic works or any other aesthetic creation;
  • schemes, plans, rules and methods for the exercise of intellectual activities, for games or for economic-commercial activities or to conduct business;
  • computer programs;
  • ways of presenting information;
  • biological and genetic material, as it is found in nature; and
  • the juxtaposition of known inventions or combination of known products, except in the case of their combination or fusion that cannot function separately or that the distinctive qualities or functions of the same are modified to obtain an industrial result or a use that is not obvious for a person skilled in the art.

What are the time and costs involved in securing a granted patent? Is expedited examination available? Are reduced fees available for certain applicants?

The average time to obtain a patent is three to five years. Likewise, the Mexican Institute of Industrial Property (IMPI) has the Accelerated Patent Procedure, which aims to speed up the substantive examination of a patent application. Similarly, IMPI allows a 50% discount for independent inventors, micro or small industry and educational institutions.

Costs might vary depending on:

  • the length of the application;
  • translation costs;
  • the official fee for the number pages in excess of 30;
  • the pursued subject matter;
  • the number of office actions; and
  • others.

However, as an exercise, considering a medium-sized patent application with an average number of office actions, and including the final fees and the first five annuities when granted, costs could be around $8,000 to $10,000.

Q: What are any specific requirements that a patent specification must meet in your jurisdiction?

The patent specification must:

  • indicate the title of the invention and specify the technical field to which it refers;
  • indicate the prior art known to the applicant to which the invention belongs and cite the documents that describe the prior art; and
  • detail the invention in clear and precise terms to allow a thorough understanding of the technical problem to be solved, and to expose the advantageous effects of the invention with respect to the state of the art.

The patent specification should be concise, but as complete as possible. The specification should:

  • comprise the connection with the figures, referencing them and the parts from which they are constituted;
  • indicate the best-known method or the best way proposed by the applicant to carry out the pursued invention; and
  • clearly indicate when it is not evident from the specification or from the nature of the invention, the way that it can be produced, used or both.

Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals or any other special type of application?

Regarding divisional applications submitted, voluntarily or at the request of IMPI, the applicant must submit the patent specification, claims and drawings. The drawings and patent specification presented will:

  • suffer no alterations that modify the invention contemplated in the main case;
  • pursue a different invention than the one pursued in the main application; and
  • contain no additional subject matter or give greater scope than the application initially filed.

When an invention or a group of inventions has concluded to be claimed as a result of the division, they may not be claimed again in the main application or in the one that gave rise to the division.

The concept of ‘continuations in part’ does not exist in Mexico as it comprises additional subject matter to that filed originally with the main application. Provisional applications or any other type of different patent application are not contemplated.

Q: What do applicants need to know about office actions and patent examiner interviews?

If during substantive examination the examiner notices any impediment to granting the patent, IMPI may require that the applicant, within two months, file information or documentation and, where appropriate, modify what is deemed appropriate, noting the amendments carried out. This two-month period can be extended by a further two months. Likewise, the examiner might issue up to four office actions before the issuance of the final rejection or the notice of allowance.

Regarding the examiner interviews, presently and since the covid-19 pandemic crisis started, IMPI does not accept interviews with examiners.

Q: Are there any recent examination trends that patent applicants need to be aware of?

Changes are under way regarding IMPI’s criteria in respect to acceptance of divisional applications derived from another divisional application, which are being rejected by IMPI, meaning that it does not recognise the priority claimed. Negotiation is ongoing and it is anticipated that the new practice will be in place imminently.

Patents related to computers are handled differently and are rejected only if it is a computer program by itself, the invention must be implemented with structural features.

Moreover, on 5 November 2021, the Federal Law on IP Protection entered into force, meaning that the Industrial Property Law has been abrogated.

Q: Is there anything else about the patent filing process that applicants should know?

In recent years, patent applications have been increasingly presented online, implying that the filing system is implemented quickly. Once a patent application is filed online, it must be processed under the same system; it will not be possible to migrate to a different one.

In accordance with the new Federal Law on IP Protection, a complementary certificate has emerged establishing that when there are unreasonable delays (ie, delays of more than five years) directly attributable to IMPI in the process between the filing date and the grant of the patent, a complementary certificate may, at the request of the interested party, be granted to adjust the validity of the same. However, the complementary certificate’s validity may not exceed five years.

Q: Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?

Utility model protection is available in Mexico. This type of protection, based on the Federal Law on IP Protection, establishes that new and industrially applicable models will be registrable. It also considers objects, utensils, devices or tools to be a utility patent that, as a result of a modification in their arrangement, configuration, structure or shape, present a different function with respect to the integrating parts or advantages in terms of their use. Also, the applicant may transform a patent application into a utility model registration and vice versa when it is inferred from the content of the application that it does not fulfil what is requested of it. Utility model registration is:

  • valid for 15 years;
  • non-extendable;
  • counted from the filing date of the registration application; and
  • subject to the payment of the fees corresponding to each annuity.

It is advisable to use this type of protection when what you intend to protect is a modification to an existing device or tool in order to improve performance.

What are the major administrative procedures in your jurisdiction?

Q: How can applicants appeal patent office decision?

If the patent authority issues an act or resolution putting an end to a process or instance, the applicant may file a motion of review before the authority within 15 working days, which will be resolved by its hierarchical superior.

The motion of review may suspend the execution of the challenged act when expressly requested by the appellant and on the assumption that it is admitted by the respective authority.

If the hierarchical superior issues a final resolution but the appellant does not agree that the corresponding annulment action may be filed before the IP Chamber of the Federal Court of Administrative Justice within 30 business days, it may be resolved by recognising the validity of the challenged act or by declaring the nullity of the resolution.

Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?

Mexican patent legislation does not establish oppositions. However, the Patent Office may receive information from third parties regarding whether an application complies with the patentability requirements for its potential grant. Such information may be submitted within two months of the application’s publication and the Patent Office may consider such information as technical support documentation for the substantive examination process, without being obliged to decide on the scope of the informant’s request.

This mechanism cannot be considered as an opposition process, since the law eliminates the quality of interested party to whoever submits the information and gives the Patent Office the liberty to decide whether to rule on the request made by the third party.  

Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation cases take?

The process for revoking a patent is to file a declaration of nullity.

Such declaration must be based on one of the following grounds:

  • the protected subject matter is not considered patentable or is extended beyond its scope of protection;
  • the applicant does not disclose the invention in a clear and complete way;
  • the claims exceed the disclosed subject of the application;
  • the priority right has been wrongfully recognised and its novelty has been unduly determined; and
  • the patent has been granted to someone who did not have the right to obtain it.

The nullity action may be brought at any time after the patent publication and may be executed by the Patent Office ex officio, at the request of a third party or the Federal Prosecutor’s Office, taking up to one year to resolve.

Q: How can opposition, re-examination or invalidation decisions be appealed?

Since Mexican patent legislation does not establish an opposition process and the submission of information does not oblige the Patent Office to rule on its scope, there would be no resolution to appeal.

The declaration of nullity on the other hand, may be appealed within 15 business days by filing a motion of review, or within 30 business days by filing an annulment action.

Q: Is administrative enforcement of patents possible?

Administrative enforcement of patents is possible through an administrative declaration of infringement, which may be enforced by the Patent Office ex officio, or at the request of whoever has and proves legal interest.

The Patent Office will carry out an analysis, avoiding violations to the patentee’s rights by enforcing:

  • the withdrawal of the infringing merchandise from circulation;
  • the prohibition of its commercialisation or use;
  • the suspension of its import, export or transit and rendering of the service; or
  • the closing of establishments and condemnation of the infringer to pay damages.

As a result, involved traders or suppliers will be obliged to refrain from selling the infringing assets as of the date on which they are notified of the administrative resolution, as well as producers, manufacturers, importers and distributors, who will be responsible for immediately recovering the products placed on the market.

Q: Does your jurisdiction grant patent-term extensions?

Patent-term extensions are not allowed in Mexico. However, the patent owner may request a one-time supplementary certificate of a maximum of five years to adjust the patent term when there are unreasonable delays during prosecution.

These delays must be directly attributable to the Patent Office, resulting in the unnecessary extension of the patent procedure for more than five years. Accordingly, a request must be filed independently when complying with the patent issuance fee, for which any application filed after that time will be considered extemporaneous and dismissed outright.

Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?

There is a conciliation procedure before the Patent Office so that the parties reach an agreement and put an end to the administrative declaration of infringement. However, the Patent Office will not pronounce itself on substantive matters, so the parties will be responsible for the agreements adopted during the negotiations.

It may be requested by either party if the resolution of the dispute has not been issued but, the opposing party must agree to the initiation of the conciliation by accepting the initial proposal of the applicant or by submitting a counterproposal. This will not suspend the substantiation of the administrative declaration of infringement.