Mexico IP Series – Diversifying your market or supply chain: Patent Protection
INTRODUCTION TO MEXICAN PATENT LAW AND PRACTICE
Conditions of patentability is a Condition of the result of an invention.
Condition that the invention be subject of exploitation.
On the US patent law excludes discoveries, is not always clear to determine we are facing a invention.
CLAIMS SECTION: Determines the scope of the patent. The docs should be filed with Mexican patent attorney and have to be in Spanish.
1st application in the world triggers priority.
The application is in a position to initiate an examination. The application should know not everything under the sun is patent protection. There may be exclusions but has to be reviewed on examination.
PATENTABLE SUBJECT MATTER
Where is our green light?
Invention maybe consider from composition, compounds, mechanisms, instruments, it should consider as invention every human creation to transform the matter.
- Under Mexican law must be a human creation implies that human intervention is necessary.
- It must allow the transform matter of energy: PHYSICAL NATURE/PHYSICAL EFFECT
- Human needs satisfaction, human has to be satisfied, has to solve a problem.
Which is industrial applicable? Can be produced or used in any type of industry.
Novelty: subject is not included in the state of the art.
**Not necessary to submit demonstration of Prior Art. Lack of Novelty: disclosure of invention will affect novelty. (KEEP IN MIND)
VENUES FOR INVENTORS FOR SUBMIT APPLICATIONS IN MEXICO.
THE LAW ESTABLISHES 2 GROUPS ON INVENTIONS.
A MATTER THAT IS ALREADY PROTECTED and a serious damage, the usage of humans methods, any consideration of novelty may affect patent. Rejections are not Definitive grants of rejections, you can apply again. Is not a definitive issue.
Another interesting topic: RELATED TO INVENTION INCLUDES EXCLUSIONS WITH A DEBATED, SECOND MEDICAL USES, NEW DOSAGE FORMS, IMPACT ON HEALTHCARE INDUSTRY
New features incorporated: PATENTS THAT USES EXPLOTATION WITH RISK OF THE ENVIROMENT, HUMANS OR ANIMALS ARE PROHIBITED.
PATENT SYSTEM IN MEXICO IS A FILE SISTEM
1st to get patent, first to file system. one year of grace period to recognize a novelty of invention. Disclosure can be conducted by third parties. This is called COVER.
Patent prosecution files are consider confidential.
Anyone can submit documents, evidence or prior art, related of the invention subject to examination. However this system a priority submission system have been / received very few application of prior art submission. This is because not binding for MEX IP Offices, is not an obligation for authority to justify or consider these.
CRITERIA OF EXAMINERS: is not possible to anticipate all the possibilities regarding patentability subject matters in the statutory law, we don’t have a manual of examiners. Cause a broad discretions for examinations and sometimes there are opinions and miscommunications
Lawyers have pursuing to have a CATALOG or CRITERIA OF EXAMINERS to have guidelines to help the applicants.
In order to solve some criteria, there is a program to examiners to have some internships from the European Patent Offices.
INPI allows certified copies of the priority documents. Reduced the backlog of patent prosecution because to resolve the number of patent prosecution applications, around 20000.
PPH can be requested month term for 3rd patent observations. And after publication is possible to request a PPH. After requesting of PH, they will receive Notice of Allowance.
In addition of this PPH, along with INPI expedite the granting of the patent in Mexico.
TRYING TO MAKE MORE CLARITY RULES ON REGULATION THAT IS COMING. RESOLVE THE LOOPS on the Statutory.
Now, is recognized the pattern adjustment compensations of the patent prosecution or in the granting of the patents. Some rules to consider what is a delay of the new law:
- Delay consider in the new law is 5 years of the patent application prosecution, NOT EXCEED 5 YEARS OF COMPENSATION.
- After the patent is granted there is a time to request the Patent Certificate only ONCE.
- No compensation on regulatory projects.
Divisional in cascade: which is divisional of divisional, is possible but is on the discretion of the Mexican Patent Office.
Pharmaceutical Patent matters is the reason of new regulations.
PATENTS: MAINTENANCE & LICENSING
Patent was obtained through the conventional route. Claiming the priority triggered by the 1st application filed the USPTO within the 12 month or if the applicant elective did use the Patent which extends period to 18 months, totaling 30 months. The patent will be prosecuted and final decision will be issued by the Mexican Patent Office, whether rejecting or granting.
If the patent is granted, enjoyed for the full terms of 20 years.
The most serious requirement will be to work and exploit the patented invention in Mexico.
This should be carefully drafted in view of Mexican licensing Law.
Mexican patent law applicable to licenses provides a licensee may Institute infringement proceedings.
The license maybe diligent in deciding or not infringement proceedings.
The Patent license should be recorded with the Patent Office if the patent owner wishes to have the public informed of the existence of the license.