Mexico: patent prosecution

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 have a 20-year term while utility models have a 15-year term, both counted from the filing date of the application.

Patents protect claims related to:

• products or process specially devised for their manufacture or use;
• processes, apparatus or means specially devised for their application; and
• certain products or processes specially devised for their manufacture, or apparatus or means specially devised for their application.

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

• Patented product: prevents third parties from manufacturing, using, selling, offering for sale or importing the product without the owner’s consent.
• Patent process: prevents third parties from using that process and from using, selling, offering for sale or importing the product obtained directly by the process, without the owner’s consent.

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

Inventions in all fields of technology are patentable when having the following characteristics:

• new: not part of the state of the art;
• inventive: 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
• industrially applicable.

Q: Are there any specific exemptions to patent eligibility?

Exemptions include inventions whose commercial exploitation is contrary to the public order or contravenes legal provisions, particularly (Article 49 Federal Law on IP Protection):

• procedures for cloning human beings and their products;
• procedures for modifying the germline genetic identity of the human being and its products when implying 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 humans or animals, and the animals resulting from these 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 or other technical product or procedure;
• 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 or medical procedures)?

Article 47 of the Federal Law on IP Protection establishes the following non-patentable technology:

• scientific discoveries, theories or principles;
• mathematical methods;
• schemes, plans, rules and methods for economic-commercial activities or businesses;
• software;
• biological and genetic material, as found in nature; and
• the juxtaposition of known inventions or product combinations, except when their combination cannot function separately or when their functions are modified to obtain a non-obvious result for a person skilled in the art.

Artificial intelligence cannot be considered as patentable as it is an abstract concept technology. However, when implemented in a process or real-life product constituting new features, this product or process may be patented before the Mexican Institute of Industrial Property (MIIP).

Q: 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 from the national filing date. However, costs might vary depending on, among other things:

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

As an exercise, considering a medium-sized patent application with an average number of office actions, including the final fees and the first five annuities when granted, costs could be around $8,000 to $10,000. It must be considered that the MIIP allows a 50% discount for independent inventors, micro or small industry and educational institutions.

Additionally, the MIIP has an accelerated patent procedure, which aims to speed up the substantive examination of patent applications.

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, exposing the advantageous effects of the invention with respect to the state of the art.

On the other hand, the specification should:

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

Divisional applications must be submitted with the patent specification, claims and drawings, avoiding:

• the modification of the invention contemplated in the main case;
• pursuing a different invention than the one pursued in the main application; and
• containing no additional subject matter or giving a greater scope than the application initially filed.

In this respect, the new Federal Law on IP Protection modified its criteria when submitting voluntary divisional applications derived from prior divisional applications, in which case, they will not be accepted by the MIIP unless an explicit requirement to divide the subject matter is issued by means of a substantial examination office action.

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 for granting the patent, the MIIP may require the applicant within two months (extendible by a further two months) to file information and documentation and/or modify what is deemed appropriate. Likewise, the examiner might issue up to four office actions before the issuance of the final rejection or notice of allowance.

Regarding the examiner interviews, since the covid-19 pandemic crisis started, the MIIP has not accepted interviews with examiners.

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

Regarding the MIIP criteria in respect to acceptance of divisional applications derived from another divisional application, they have not been rejected initially in the formality examination as they are currently handled under the criteria of the substantive examiners, who will have to analyse each case. Negotiation is ongoing, and it is anticipated that a new practice will be put in place.

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

In recent years, patent applications have been increasingly prosecuted online, and applicants should consider that once a patent application is filed online, it must be processed under the same system, meaning that it will not be possible to migrate to a different one. Furthermore, although there has been migration to an e-filing system, all signatures for the provided documents must be autograph signatures, as DocuSign is not accepted by the MIIP.

Additionally, a complementary certificate has emerged, establishing that when there are unreasonable delays (ie, delays of more than five years) directly attributable to the MIIP 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 patent. 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 and tools to be included in utility patents that, as a result of modifications in their arrangement, configuration, structure or shape, present a different function with respect to integrating parts or advantages for 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 advisable when what the applicant intends to protect is a modification to an existing device or tool 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 is the right procedural moment to offer further evidence and to suspend the execution of the challenged act when expressly requested by the appellant, 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, the corresponding annulment action may be filed before the IP Chamber of the Federal Court of Administrative Justice within 30 business days, and 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 MIIP may receive information from third parties regarding whether an application complies with the patentability requirements for its potential grant. Such information must be submitted within two months counted from the application’s publication in the Official Gazette; in this case, the Patent Office may consider such information as technical support documentation for the substantive examination process.

This mechanism cannot be considered an opposition process, as the law eliminates the quality of interested party to whoever submits the information, and the MIIP is not obliged to decide on the scope of the informant’s request.

Q: What are the processes for re-examination of a patent?

Mexican patent legislation does not provide for re-examination. Once a patent is denied, it cannot be re-examined.

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.

This declaration can be requested by a third party or by the MIIP ex officio, at any time after the patent publication of the patent in the Official Gazette.

According to Article 154 of the Federal Law on IP Protection, it 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.

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

Considering that the Mexican patent legislation does not establish an opposition process with respect to patents, and the submission of third-party observations does not oblige the MIIP to rule on its scope, there would be no resolution to appeal.

On the other hand, the declaration of nullity 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 MIIP ex officio, or at the request of whoever has and proves legal interest (Article 329, Federal Law on IP Protection).

The MIIP will carry out an analysis, eliminating violations to the patentee’s rights (Article 344, Federal Law on IP Protection) 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 directly attributable to the MIIP, 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, and 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 MIIP, so that the parties reach an agreement and put an end to the administrative declaration of infringement, granted the character of res judicata with enforcement. 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 at any stage of the administrative declaration proceeding. If the resolution of the dispute has not been issued, however, 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.