Israel Jimenez (Alvarez Delucio) – Mexico
Well, I’m going to talk about Mexican practice.
Kind of patents you can protect in Mexico is 2 ways – regular ways of the Paris Convention, and the other way we have PCT, National Phase – Phase 1, National Phase – Phase 2.
The deadlines on the Paris Convention, we have 12 months, and for PCT we have 3 months. No more months, no more extensions. It’s important for you. Mexico also has a lot of ways to protect when your clients or your inventors disclose without any protection. Mexico allows 12 months after disclosure.
Excess fees –
This is good news for you. No official fees are paid for excess pages in description or excess of claims.
As I made you aware, according to our practice we can submit a copy of a corresponding granted patent, and also we can submit documents related of technical examination report. Such documents can be submitted during the
prosecution, likewise to accelerate the prosecution of these patent applications, Mexico takes advantage of having a neighbour in the U.S. For this reason, Mexico is part of the Pilot Program of the PPH process from March 1st this year, and as you know, we have a very, very short time, but this maybe is a new way to accelerate all the patent applications in the future.
After satisfying the formal requirements the patent application is published in the official gazette. It’s important to note that no examination report is necessary.
What is good news for you is that the examination fees are included in the final fees.
Pharmaceutical Products – In my opinion, this is a hot topic for Mexico, because these kind patents have some difficulties to be granted, but it’s important to inform you that Mexico allows inventions of pharmaceutical products direct to the second use but they need to adopt the Swiss Style claims.
The one new hot topic in Mexico, concerns the Patent Applications direct to the Regime Dosage. In this respect
we had some meetings with Mexican authorities to discuss this topic but until now such Patent Applications are in discussion.
Software and Business Methods – Well, this is another hot topic, as in other countries. As you know, the software can be protected as copyright, but in Mexico the Patent Application which involves software can be patented. But just In case of such Applications, if there is a technical contribution to the prior art, this
is the only way you can get a patent. An example for this kind of patent can be a computer controller process which moves a robot arm, etc., but until now we had some meetings with the Mexican authorities in order to determine what happened with these applications, and we are working to establish the guidelines for this matter.
In connection with the Business Methods, there are a lot of patents trying to protect them, but until not in Mexico,
they are not patentable.
Disclosure requirements – Well, it’s important to point it out that Mexican Examiners are requiring us to submit relevant documents in order to demonstrate the novelty and inventive step of the invention. Such documents can be submitted in the English language. An example of this is that the Mexican examiners require us to file the translation of Russian or Chinese documents, because it’s impossible to understand them.
Third party observation – this is the last amendment in our IP Mexican Law: “A third party can submit some
information to demonstrate a lack of novelty and inventive step of the patent applications. Between the 6 months after this application has been published in the Official Gazette.