Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
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Results: 4 Answers
Patents
3.
Obtaining a patent
3.1
Which governing body controls the registration procedure?
 
Mexico
The Mexican Institute of Industrial Property (IMPI).

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
3.2
What is the cost of registration?
 
Mexico
Several factors affect the cost of filing a patent application in Mexico, including:

  • the size of the application;
  • the filing route followed (Patent Cooperation Treaty or Paris Convention); and
  • the completeness of the file on filing.

This uncertainty has been exacerbated by a recent change in the government fee structure. Whereas previously a fixed fee was charged to register a patent, in April 2018 this structure changed to a fixed fee for the first 30 pages plus a further fee for each additional page.

Depending on the above factors, the average patent application should cost between $1,500 and $2,500 to file, including the costs of translation and compliance with formalities. Larger applications can cost twice this amount or even more, once translation costs and government fees are added up. Electronic form nucleotide or amino-acid sequences for biotechnology inventions do not incur additional costs regarding government fees. After publication, the average application will receive a maximum of four office actions - typically two to three - for which an overall budget of between $3,000 and $8,000 should be factored in. The translation costs of foreign prior art may also substantially increase the costs at this stage, if non-English prior art is cited.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
3.3
What are the grounds to reject a patent application?
 
Mexico
The general grounds of lack of novelty, lack of inventive step or lack of industrial applicability and ineligibility of subject matter, including therapeutic methods of treatment or diagnostics, business methods and the like.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
3.4
What programmes or initiatives are available to accelerate or fast track examination of patent applications?
 
Mexico
Patent Prosecution Highway (PPH) agreements with several offices are in place and such agreements are continually being expanded by IMPI. A list of current PPH agreements can be found online at www.gob.mx/impi/acciones-y-programas/servicios-que-ofrece-el-impi-patentes-programa-del-procedimiento-acelerado-de-patentes-pph?state=published. Early publication of the patent application is also available. Substantive examination starts only after publication.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
3.5
Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
 
Mexico
Medical method claims, plant claims and computer-implemented invention claims directed to a method of doing business, mental acts, games and the like are not accepted. Case by case, however, claim drafting forms are accepted by IMPI, but these depend on the nature of the invention and the actual drafting of the specification of the application.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
3.6
Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
 
Mexico
Currently, no such mechanisms are available in Mexico. However, under the new United States-Mexico-Canada Agreement, they should be implemented in the terms of such agreement if and when enacted.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
3.7
What subject matter is patent eligible?
 
Mexico
Mexican law defines an ‘invention’ as “any human creation that allows transforming matter or energy for the benefit of mankind in satisfying their concrete needs”.

There are general exceptions consistent with the Agreement on Trade-Related Aspects of Intellectual Property Rights, including:

  • plant varieties and animal breeds;
  • essentially biological processes (non-microbiological);
  • artwork;
  • methods for performing games;
  • mental acts;
  • business or mathematical methods; and
  • obvious combinations of known inventions.

Combinations of known inventions and new uses of known inventions may be patentable if they have synergistic effects (ie, solve a problem that cannot be solved by using the inventions separately) or lead to a non-obvious industrial result or use.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
3.8
If the patent office does not grant a patent, is an appeal available and to whom?
 
Mexico
The denial of a patent can be appealed through the following channels:

  • before IMPI, through a review recourse filed within 15 working days of the date on which the applicant is served notice of the decision, which will be studied and decided by the chief of the authority which issued the decision; or
  • before the Federal Court for Administrative Affairs (FCAA), through a nullity claim filed within 30 working days of the date on which the applicant is served notice of the decision, which will be studied by the magistrates of the FCAA.

In practice, IMPI patent denials are appealed through nullity claims, since the review recourse is studied and decided by the chief of the authority that issued the denial and in most cases IMPI will confirm its own decisions.

The FCAA’s decision can be subject to further and final appeal before the Federal Circuit Court; while IMPI’s decision in a review recourse can be challenged first before the FCAA and finally before the Federal Circuit Court.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril