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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

The standard international requirements for patentability apply in Mexico – in particular:

  • absolute novelty;
  • inventive step (non-obviousness); and
  • industrial applicability.

Mexico’s definition of ‘invention’ must be considered, as only inventions under the definition – under which an invention must allow for a transformation of some kind – are patentable. Further, utility models are available for apparatus, objects and tools. In order for a utility model to be patented, only novelty and industrial applicability are required.

What are the limits on patentability?

Novelty

Absolute novelty applies in Mexico. Public use is considered prior art when evaluating novelty and inventive step.

Inventive step
Inventive step is determined using the ‘problem-solution’ approach. Mexican law states that in order for an invention to lack inventive step, it must be considered obvious and based on the prior art. If the invention is not considered part of the prior art, it involves an inventive step.

Industrial applicability
Under Mexican law, an invention is considered to have industrial applicability if it can be used for commercial or industrial activities, as supported in its detailed description.

Subject-matter eligibility
In general, unpatentable subject matter in Mexico is consistent with the Agreement on Trade-Related Aspects of Intellectual Property Rights and includes:

  • methods of treatment or diagnosis;
  • computer programs;
  • ideas;
  • plant varieties (International Union for the Protection of New Varieties of Plants protection is available), animals and parts thereof;
  • essentially biological breeding methods;
  • discoveries; and
  • mathematical methods or mental acts.

Secondary uses (medical or otherwise) or variations of known inventions are patentable only if the results are unexpected or non-obvious. Both Swiss-style and European Patent Convention 2000 claim formats are allowed in Mexico for pharmaceutical inventions relating to secondary medical uses. A patent may be denied if its content is contrary to public order, morals or law.

No precedents define what is considered an ‘abstract idea’ or set out the criteria for something to be considered ‘existing in nature’. However, the definition of ‘invention’ implies that an invention must allow for a transformation of some kind. This requirement is key when drafting applications and defending an invention’s patentability. 

To what extent can inventions covering software be patented?

Although the Patent Office has not developed clear criteria for this kind of invention, only computer programs are expressly excluded from patentability. In practice, software patents have been granted mainly when tangible elements within the system are required and described. Therefore, the patentability of software inventions must be assessed on a case-by-case basis. The term ‘computer program’ should generally be avoided in claims. No court precedent addresses the patentability of software in Mexico.

To what extent can inventions covering business methods be patented?

Business methods as such are not patentable. However, systems configured to perform a business method may be patented. A case-by-case assessment is required. Typically, an eligible invention will include tangible elements, its configuration and signal processing.

To what extent can inventions relating to stem cells be patented?

The Patent Office has issued objections regarding inventions which use stem cells where an embryo is manipulated and presumably destroyed as part of the invention, as they are considered contrary to public order, morals or law. However, methods for differentiating existing stem cells or methods that do not involve embryos are typically allowed. No court precedent addresses the patentability of stem cells, even in the case of embryo manipulation. In terms of differentiation, the human body and its parts cannot be patented. Therefore, claims relating directly to an organ – even if obtained from stem cells – may face objections.

Are there restrictions on any other kinds of invention?

Plant varieties are not patentable. However, transgenic plants and certain inventions relating to plants are patentable if the methods used are not essentially biological. The Patent Office recently restricted the criteria for an invention to be considered biological to the selection of phenotypic features of a plant as a traditional breeding process.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

Mexico has a one-year grace period before the filing date of a patent application (or the priority date, if applicable) for disclosures made by the inventor, other than patent publications. Information about any disclosure must be submitted alongside the patent application, including evidence of disclosure.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

There are two ways to oppose a patent in Mexico, both of which are administrative and must be brought before the Patent Office.

Third-party observations
Third parties can submit ex parte information that is material to an invention’s patentability within six months of the publication date of the patent application. The Patent Office will notify the applicant about any third-party submissions and will decide whether the information is relevant.

Third parties have no access to the patent’s file and cannot intervene during prosecution of the patent. However, third parties can initiate other proceedings to invalidate the patent later. Third-party submissions do not modify the timeline for prosecution.

Nullity actions 
Nullity actions can be brought in inter partes proceedings before the Patent Office by third parties with demonstrable interest. Nullity actions can also be filed as counterclaims in response to an infringement action brought by the patent owner, as infringement actions are also brought before the Patent Office as administrative proceedings in trial format. Interested parties can initiate a nullity action regardless of whether they submit third-party observations during prosecution.

Either party can challenge the Patent Office’s decision in two further appeals.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Patents can be challenged only through administrative procedures, not through the courts.

How can patent office decisions be appealed in your jurisdiction?

First-instance appeals of Patent Office decisions (including patent rejection decisions) must be brought before the Federal Court for Tax and Administrative Affairs (FCTAA). The FCTAA is an administrative court before which nullity claims against Patent Office decisions may be filed. In such cases, the party affected by the decision is the plaintiff and the Patent Office is the defendant. If a third party is affected by the outcome, it will also be included in the proceedings. Nullity claims must be filed within 45 working days of the Patent Office decision being served on the patent owner. Once the FCTAA submits an appeal to the Patent Office, the Patent Office has 45 working days to file a response. Consequently, the FCTAA often grants parties a common term of 15 working days to file final pleas before issuing the corresponding decision. Cases take at least one and a half years to two years to be decided.

FCTAA decisions can be appealed before the Federal Circuit Court, which is the highest court for patent infringement. Patent infringement cases before the Federal Circuit Court typically take between six months and one year to be decided; in such cases, the plaintiff is the affected party and the defendant is the FCTAA. If a third party is affected by the outcome, it will also be included in the proceedings.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

Timing
For conventional patents, applicants should expect to wait between three years and six and a half years (four-year average) to be granted a patent.

For Patent Convention Treaty (PCT) patents in the national phase, applicants should expect to wait between eight months and four years (three-year average) to be granted a patent.

In accordance with the Patent Office’s internal rules, patent prosecution must be completed within five years of the patent’s publication date (totalling six and a half years, as applications are published within 18 months of the filing date).

In practice, for applications not claiming priority or not filed through the Paris Convention, substantive examination often begins two and a half years after the filing date. Theoretically, after two and a half years have passed since publication of the patent (four years after the filing date), examinations cannot be initiated.

PCT applications are published as soon as they comply with all formalities and are examined once they have been published. Since they can be published within two months of the date of the national phase filing, in some cases examination of a PCT application entering the national phase in Mexico may begin within one year, theoretically no later than two and a half years of the national phase filing date.

Patents can be issued a maximum of four substantive examination actions before the Patent Office must issue a definitive decision. Once substantive examination has started, actions must be issued within four months of the last communication by the application.

Mexico has cooperation agreements in respect of the Patent Prosecution Highway (PPH) with the patent offices of Canada, China, Spain, Japan, South Korea, Singapore and the United States. The PHH is available as long as examination has not yet begun in Mexico. A PPH with the European Union has been announced and is in a trial stage. If examination has already begun in Mexico, the Mexican patent claims should conform to the requirements of a foreign patent office which serves as an examination office for PCT applications in order to accelerate prosecution and the grant of the patent.

Budget
A reasonable budget to obtain a patent is between $9,000 and $10,000, plus translation costs. Excluding translation costs, costs range between $1,500 and $2,500, depending on:

  • whether the applicant has small-entity status;
  • whether the application is a PCT application or conventional filing;
  • whether priority is claimed; and
  • the complexity of the application.

A reasonable budget for the late filing of documents (formalities) is between $100 and $500, depending on the above criteria.

Reports and responses to substantive examination actions can range between $800 and $2,000. Significant variations may occur if the examiner requests translations of foreign documents from languages such as Chinese or Korean. A suitable budget for the entire examination process is around $6,000, excluding translation costs.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Infringement actions must be brought as administrative proceedings before the Patent Office. Damages can subsequently be claimed in a separate trial before the civil courts only if the Patent Office finds that infringement has occurred.

Specific enforcement procedures exist for patents in relation to public procurement (government bidding processes). For pharmaceutical patents, the Linkage Gazette – which lists all patented pharmaceutical products and is equivalent to the Food and Drug Administration’s Orange Book – should be considered in order to facilitate enforcement in a proactive manner. Further, enforcement through Customs can be effective; thus, patent owners should coordinate with authorities in order to enforce their patents through Customs.

What scope is there for forum selection?

The only forum for infringement determinations is the Patent Office. Damages claims can be brought before the civil courts only.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

The burden of proving infringement generally rest with the plaintiff (ie, the patent holder). Mexico has no formal discovery process; therefore, gathering evidence before initiating an infringement action is essential.

A notary public must certify all evidence of the marketing of the infringing product. Further, the notary must provide a deed explaining the circumstances in which the infringing product was found in the market.

Before trial, the Patent Office will typically inspect the alleged infringer’s facilities. During inspection, the Patent Office can request data and information about the processes used by the alleged infringer and other relevant information.

Based on the evidence found during investigation, the Patent Office may take immediate injunction measures after securing a bond from the patent owner in order to cover potential damages to the alleged infringer. Injunctions may include the seizure of potentially infringing products, equipment or facilities, as well as the temporary closure of the alleged infringer’s business premises.

Infringement actions must be initiated within 10 days of an inspection. However, inspections can also be requested as part of an infringement action, in which case the alleged infringer will be notified of the infringement action during inspection. 

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

An alleged infringer can file a counter-bond to suspend the effects of an injunction, although this must be greater than the patent owner’s bond. Plaintiffs cannot prevent this action. While counter-bonds do not delay proceedings, they can diminish the effect of an injunction. Further, infringers often file counteractions claiming nullity of the patent as a defence and a means of delaying the proceedings, as the Patent Office will first analyse the validity of the patent before determining infringement.

During proceedings, patent owners must constantly monitor the alleged infringer in order to gather as much evidence of infringement as possible, which can be used to demonstrate bad faith or further infringement. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

An alleged infringer will typically initiate a countersuit along with its initial response to the infringement action as an administrative proceeding before the Patent Office, using a nullity action as the basis for its defence. A patent’s validity can be challenged only before the Patent Office.

At trial
What level of expertise can a patent owner expect from the courts?

A benefit of the Patent Office serving as the forum for infringement and nullity actions is that it can apply its practical knowledge when reaching decisions. Further, the Federal Court for Tax and Administrative Affairs (FCTAA) – the administrative court before which nullity claims against Patent Office decisions may be filed – has a specialised IP court.

That said, even the FCTAA is not as skilled in patent litigation as the Patent Office; therefore, it is essential to build cases as clearly as possible with regard to legal and technical facts in order to avoid misinterpretations by the courts. 

Are cases decided by one judge, a panel of judges or a jury?

In the first instance, Patent Office officers and patent examiners decide patent cases in an administrative hearing. In further instances, a panel of judges hears patent cases at either the Federal Court for Tax and Administrative Affairs or the Federal Circuit Court, which hears all final appeals.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

N/A.

What role can and do expert witnesses play in proceedings?

Where a case relies on substantive issues and technical determinations, expert witnesses play a vital role, as they can counter the opinions of Patent Office examiners, who typically act as experts for the Patent Office.

As the Patent Office is the authority in relation to patent evaluations, on appeal the courts tend to favour the Patent Office’s opinions; therefore, expert witnesses play a vital role, particularly in appeals against Patent Office decisions.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Mexico has no doctrine of equivalents as such and no court precedent is used in a similar fashion. However, on a case-by-case basis, certain arguments based on statutory provisions and the actual drafting of the claims can be developed in order to minimise the effect of narrowly drafted claims. 

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

By statute, it is possible to obtain preliminary injunctions against an alleged infringer through an inspection if the inspection reveals obvious infringement. To impose such measures, the plaintiff must post a bond to cover potential damages incurred by the party against which the injunction measures are made. To lift an injunction, the alleged infringer can post a counter-bond. The counter-bond must be greater than the patent owner’s bond in order to cover potential damages incurred by the patent owner.

While Mexico’s injunction system is seen as weak because injunctions can be lifted via counter-bonds, patent owners can benefit greatly as, by statute, the minimum damages amount awarded for infringement is at least 40% of the sale price to the public, which is greater than the gross sale price.

How are issues around infringement and validity treated in your jurisdiction?

Infringement and validity actions are handled as separate administrative proceedings before the Patent Office, even though nullity and infringement actions are typically brought as a counteraction and are litigated or resolved at the same time. Damages stemming from infringement actions are rare, as parties typically settle before reaching the civil court stage in order to avoid the possibility of a damages award of at least 40% of the sale price to the public in addition to a fine.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Although it is against the principles of the Paris Convention, the Patent Office and the courts tend not to contradict decisions made by skilled courts in other jurisdictions. However, although it is extremely difficult, it is not impossible to obtain an independent decision that contradicts decisions from foreign jurisdictions.

Damages and remedies
Can the successful party obtain costs from the losing party?

Damages can be claimed only after the Patent Office has issued a decision regarding the infringement and all chances for appeal have expired. Costs can be claimed as part of the damages. By statute, the minimum damage amount awarded for infringement is 40% of the sale price to the public.

What are the typical remedies granted to a successful plaintiff?

In infringement cases, the Patent Office will impose a fine (regardless of damages) based on the facts of the case. It can also impose other remedies, including orders to:

  • stop commercialisation of the infringing goods and their manufacture or packaging;
  • stop the use of the infringing goods; and
  • suspend services or facilities.

These measures can be imposed provisionally during proceedings and as permanent or temporary injunctions.

The plaintiff can negotiate a settlement with the infringing party based on the minimum amount of damages established by statute (ie, at least 40% of the sale price to the public). However, if the infringer is unwilling to negotiate, the patent owner can initiate a damages suit before a civil court, in which case it must demonstrate actual damage caused and actual loss suffered, as these factors will serve as the basis for calculating damages.

In successful nullity actions, the defendant can claim damages, as it has been prevented from performing its non-infringing activities. Damages and remedies are evaluated on a case-by-case basis, as it can be difficult to determine actual damages and who should be held accountable.

How are damages awards calculated? Are punitive damages available?

By statute, damages are 40% of the sale price to the public. Therefore, unit sales and the sale price must be determined. Only direct damages or damages relating to the inability to perform tasks (prejudice) are available. Punitive damages are unavailable.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Because injunctions can be lifted via counter-bonds, and are typically enforced where there is a clear presumption of infringement, whether an injunction is permanent will depend on the type of injunction and its economic effect, as well as the costs and benefit to the parties. That said, injunctions are usually become permanent once infringement is proved.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

First-instance decisions take between one and a half years and two and a half years to obtain. It is not possible to expedite this process.

How much should a litigant plan to pay to take a case through to a first-instance decision?

Typically, a litigant should plan to pay between $25,000 and $40,000 for a first-instance decision, but this may increase to as much as $100,000, depending on factors such as the difficulty of obtaining proof of infringement and the need for expert opinions.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

The right to appeal varies from case to case; typically, appeals will be accepted for the following reasons:

  • errors or negligence in the proceedings;
  • improper evaluation of evidence;
  • lack of due reasoning in the decision that is challenged.

In many cases, the appeals court will return the case to the prior instance, so that the lower-instance court can correct any errors and reissue its decision. Although rare, the appeals court may order the lower court or authority to reach a specific decision based on the substantive issues presented during litigation. 

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

No other dispute resolution options are available, apart from remedy through the Patent Office or the courts in the case of appeals. However, by statute, the parties can opt for arbitration or local jurisdiction only if the controversy affects only their private interests.

The Patent Office issues so-called ‘administrative declarations’ (which can be dealt with only by the Patent Office or appeals courts), under which the authority imposes fines and opens up the possibility of claiming damages.

Even if parties reach a settlement before the Patent Office has issued a decision, the Patent Office may continue proceedings on its own and impose fines on the infringer.

If the parties agree, arbitration may be used to determine damages, although parties typically reach an agreement beforehand, given the drastic statutory damage amount of 40% of the sale price to the public.