MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
1. Patents 1.1 Legal Framework and Patentable Subject Matter In Mexico patent protection is broadly guaranteed by the Mexican Constitution and international treaties. The specific legal framework governing patent rights is the Federal Law for the Protection of Industrial Property (FLPIP) and its Regulations. In addition to patents, utility model and industrial design protection is available. As a general rule, inventions are patentable if they are novel, involve an inventive step, and are industri- ally applicable. However, the law expressly excludes certain subject matter from patentability or from being regarded as an invention. Such exclusions include discoveries, scientific theories and principles, math- ematical methods, literary or artistic works and other aesthetic creations, as well as schemes, plans, rules, and methods for performing mental acts, playing games, or carrying out business or economic activi- ties. Computer programs and methods for presenting information are likewise excluded from patent protec- tion. In addition, biological and genetic material as found in nature is not regarded as an invention and is therefore not patentable. In addition, the mere aggregation or juxtaposition of known inventions or products is not patentable unless the combination results in a technical integration such that the elements cannot function independently, or unless the combination produces modified charac- teristics or functions resulting in a non-obvious and industrially applicable technical effect. Additionally, the law expressly forbids patenting the following inventions: • Invention contrary to public order, particularly where such exploitation must be prevented to protect human, animal, or plant life or health, or to avoid serious environmental harm. This exclusion covers, among others, human cloning processes and products, processes for modifying the human germline genetic identity where the development of a human being is possible, industrial or commercial uses of human embryos, and genetic modification
of animals that is likely to cause suffering without substantial medical or veterinary benefit. • Plant varieties and animal breeds, except for microorganisms. • Essentially biological processes for the production of plants or animals and the products obtained therefrom are not patentable, without prejudice to the patentability of microbiological or other techni- cal processes and their resulting products. • Surgical or therapeutic methods for the treatment of the human or animal body, as well as the diag- nostic methods applied to them. • The human body, at any stage of its formation and development, including the mere discovery of one of its elements such as a gene sequence. However, biological material that is isolated from its natural environment or produced by means of a techni- cal process may be patentable, even if it previ- ously existed in nature, provided that the industrial application of a full or partial nucleic acid or protein sequence is expressly disclosed in the patent application. 1.2 Patent Granting Procedure The applicant must file an application before the Mexi- can Patent and Trademark Office (IMPI). Such applica- tion can be filed directly by the inventor/applicant or by the authorised agent. In this latter case, the agent must file the application with a Power of Attorney (PoA), duly granted by the titleholder/applicant. IMPI will conduct two examinations: formal and sub- stantial. During the formal examination, IMPI will review for- malities such as the PoA, if there is an assignment agreement, a priority claim, etc. If there is any miss- ing information/documentation, or IMPI considers that clarification is required, it may issue up to two Office Actions requiring the applicant to clarify or submit any missing/required documentation. In the substantial examination stage, the analysis is mainly focused on technical aspects. This means that the examiner evaluates whether the application fulfils with the legal requirements to be considered an inven- tion: new, with inventive step and subject to industrial application.
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