Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Mexican legislation foresees the possibility of protecting any type of invention that is new, the result of an inventive step and susceptible of industrial application, with some exceptions that cannot be protected in the country (article 46 of the Federal Law for the Protection of Industrial Property (LFPPI)) and also other matters that are not considered as inventions in Mexican legislation (article 47 of the LFPPI). The list of exceptions and matters not considered an invention in Mexican legislation are as follows:

  • exceptions are essentially biological processes for obtaining, reproducing and propagating plants and animals, biological and genetic material as found in nature, animal breeds, the human body and the living matter constituting it and plant varieties; and
  • not considered as an invention are theoretical or scientific principles, discoveries that consist in making known or revealing something that already existed in nature even though it was previously unknown to man, schemes, plans, rules and methods for carrying out mental processes, playing games or doing business and mathematical methods, computer programs, methods of presenting information, aesthetic creations and artistic or literary works, methods of surgical, therapeutic or diagnostic treatment applicable to the human body and to animals and the juxtaposition of known inventions or mixtures of known products, or alteration of the use, form, dimensions or materials thereof, except where, in reality, they are so combined or merged that they cannot function separately or where their characteristic qualities or functions have been so modified as to produce an industrial result or use not obvious to a person skilled in the art.

 

In addition to the above, article 49 of the LFPPI foresees specific exemptions to what is considered ‘patentable matter’, as follows:

 

I.- Inventions whose commercial exploitation is contrary to public order or contravenes any legal provision, including those whose exploitation must be prevented in order to protect the health or life of persons or animals or plants, or to avoid serious damage to the environment. In particular:

a) The procedures of cloning of human beings and their products;             

b) The procedures of modification of the germinal genetic identity of the human being and its products when these imply the possibility of developing a human being;

c) The use of human embryos for industrial or commercial purposes, or

d) Procedures for the modification of the genetic identity of animals, which involve suffering for them without substantial medical or veterinary utility for man or animal, and the animals resulting from such procedures;

II.- Plant varieties and animal breeds, except in the case of microorganisms;

III.- Essentially biological processes for obtaining plants or animals and the products resulting from these processes.

IV.- The methods of surgical or therapeutic treatment of the human or animal body and the diagnostic methods applied thereto, and

V.- 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.

Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Invention made by an employee

If an employee is hired to perform research or work focused on improving proceedings on behalf of an employer, the property of the inventions created during his or her job pertain to the employer. In this case, inventions have to be created using the employer’s recourses and during working hours.

If an invention is created by an employee who is not expressly hired to do research and development for the employer and the invention is created using the employer’s resources, then the invention will pertain to the employee, but the employer will have a preferential right to acquire the right to acquire the property of the invention or the right to use it in the same terms as the employee could offer to a third party.

 

Invention made by an independent contractor

The property of the invention will pertain to the inventor, except if, in the agreement entered with the contractor, there is an express provision to determine that the property of the invention will pertain to the party that entrusted the invention development.

 

Multiple inventors

The property of the invention will be split into equal shares among the inventors, except if, through agreement, they agree to distribute the property among them in a different form.

 

Joint venture

The parties in the joint venture agreement will have to determine what will happen with the ownership of patents developed during the term of the business relationship.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Concerning the prosecution process of a patent application in Mexico, the application is divided into five stages, which are:

  • the filing of the patent application;
  • the development of the substantial or formal examination by the patent office (this stage normally occurs between the three and six months from the Mexican filing date);
  • the publication of the patent application (the publication of a patent application should occur 18 months from the Mexican filing date or from its recognised priority (in Patent Cooperation Treaty (PCT) cases the publication usually occurs once the formal examination has already finished, since the 18 months should be counted as from the international filing date);
  • the development of the technical or in-depth examination (this stage normally starts between two-and-a-half to three years from the Mexican filing date); and
  • the final resolution on the acceptance or refusal on the granting of the patent (this last stage normally occurs between three and four years).

 

An estimate of the involved fees from the filing date until the granting of a patent application in Mexico is about US$6,000, including filing, prosecution and granting of the same, and will depend on several aspects, such as the size of the specification text, number of official actions.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The patent office has a procedure to expedite patent prosecution of pending patent applications and this is a programme involving other foreign patent offices, known as the Patent Prosecution Highway (PPH). At this time, the Mexican patent office has signed up to the PPH’s programme with the Chinese patent office, the Japanese patent office, the Korean patent office, the Spanish patent office, the Austrian patent office, the Canadian patent office, the Portuguese patent, the Singapore patent office, the European patent office, the Colombian patent office, the Chilean patent office, the Peruvian patent office and the United States patent office (USPTO). These PPH programmes have proved to be a success in pending Mexican patent applications, since the prosecution time has been reduced considerably by up to around one month when a request is made at the Mexican patent office.

The favourable results of the international PCT (eg, written opinion) may be used for promoting an application under PPH, specifically, the favourable results from the USPTO or the European Patent Office.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The specification text of a patent application that is being filed before the patent office must include a detailed description of the invention, which must be sufficiently clear and complete to be fully understood and, where appropriate, to serve as a guide for a person with average skill in the art to make it. It also must mention the best method known to the applicant for carrying out the invention when this is not clear from the description thereof. It is also necessary to include, when necessary, a set of drawings for the better understanding of the description, sequence listings in the case of genetic material, a copy of the deposit of biological material (microorganisms, cells, fungi or plants), a set of claims that must be clear and concise and may not exceed the contents of the description and an abstract of the invention, which shall serve solely for the publication thereof and as an element of technical information.

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

In reference to prior art disclosure obligations, it should be noted that Mexican legislation does not foresee a duty of the inventor to disclose prior art affecting his or her invention to the patent office as in other countries, such as the United States.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

 

Mexican legislation does not accept the filing of additional or new matter different from that originally sought in the specification text of a pending patent application, either by submitting a new set of claims in the corresponding patent application or by filing a divisional patent application with a new set of claims. In this respect, it is important to consider that the only amendments that can be made in a pending Mexican patent application or when filing a divisional case will refer to a set of claims that does not include new matter as otherwise the matter will be objected to by the patent office.

However, if the set of claims to be submitted in either a pending patent application or when filing a divisional case only include matter that was originally claimed and described in the specification text of the former patent application, such a set of claims will be acceptable.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes, it is possible to do so before the Specialist Chamber for Intellectual Property matters (SEPI) of the Federal Tribunal of Administrative Affairs (TFJA).

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Article 109 of the Federal Law for the Protection of Industrial Property provides a mechanism for third parties submitting information before the patent office in order to make the examiner aware of relevant prior art or subject matter that may not be within patentability requirements. The information is solely permitted to be entered into the examination process and the examiner will have the final decision on the matter. The ‘observation procedure’ will have to be filed within two months of the issuance of the publication of the patent application in the Official Mexican Gazette.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

There is no provision in Mexican law to resolve such a dispute, as the only procedures available are post concession, as discussed previously.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

There is no provision in Mexican patent law for re-examining or for actually revoking a patent. The patent office only provides a procedure for conducting a cancellation action against a patent. Such an action must be requested by a third party with legal interest.

A court may not amend the patent claims during a lawsuit; however, partial nullity is contemplated in Mexican law and, therefore, where partial nullity of a patent is determined, the nullified claims will be omitted from the patent.

Patent duration

How is the duration of patent protection determined?

The validity or patent duration of a patent of invention in Mexico is 20 years counted as from the Mexican filing date if and when the annuity payment (maintenance fees) are affected in real time. In PCT cases, the 20 years will be counted from the PCT’s international filing date.

Law stated date

Correct on

Give the date on which the information above is accurate.

12 March 2021.