Mexico: Does Your Product Not Meet The Requirements For Patentability? Not Everything Is Lost.

Last Updated: 16 April 2014
Article by Octavio Espejo and Jorge Juárez

Nowadays, many companies and inventors face the problem of leaving their inventions and developments unprotected because of increasingly strong patentability examination procedures around the world.

However, not everything is lost. In Mexico and many other countries, there is a legal protection alternative to patents for those products that do not comply with all the requirements for patentability, especially those which do not comply with the requirement of inventive step. This alternative is generally known as "utility model", although in some countries it is also known as "petty patent" or "small patent"1. In fact, this option is eligible for entering national phase under the PCT where available.

In general terms, the utility model has the following advantages over patents: registration requirements are less demanding, their process is faster, and the rates of filing and maintenance are lower. Additionally, in certain countries, utility models do not require a substantive examination. However, the main disadvantage of this alternative is that the term of protection is shorter in comparison with that granted to patents in most countries under international treaties.

In the particular case of Mexico, the Law on Industrial Property defines that utility models are those considered as "objects, gadgets, apparatuses or tools that, as a result of a change in its arrangement, shape, structure or form, show a different function with respect to its component parts or advantages in terms of its usefulness" (Article 28 LPI). Therefore, in order to assess the possibility of protection under a utility model, it is important to first determine if, instead of complying with the definition of an invention, what was developed and needs protection meets the definition provided for a utility model. For instance, processes are not eligible for protection by means of a utility model as they do not comply with such definition.

If the definition above is met, the product to be protected must, in addition, be novel and susceptible of industrial application. This is determined on the basis of the substantive examination conducted by the Mexican Institute of Industrial Property (IMPI). As mentioned above, an advantage of utility models is that their process is faster. In Mexico, on average, the first notice related to the substantive examination of a utility model application is received within 1 year and a half after its filing, whereas in the case of patents, it is received, on average, from 3 to 4 years after filing. With respect to costs, rates of utility models are 30 to 50% lower than those corresponding to patents.

If the requirements listed above are met, you need to take in account that the term of protection in Mexico for utility models is 10 years as of the date of filing instead of the twenty years of a patent. The scope of protection is the same as that of a patent, since the holder is conferred the same exclusivity rights on his product based on the claims.

In addition, it is important to take into account that in some laws, a patent application may be transformed into a utility model (or vice versa) after the filing. In the case of Mexico, this transformation can be performed within three months following the filing date, or within three months following the date on which the IMPI requires the applicant to do so. However, the latter possibility is not the best because the Examiner may not request such transformation. Typically the examiner will only object inventive step (non-obviousness) but will not require the conversion into a utility model application.

Utility models may be chosen when the results of the preliminary examination report of the PCT confirm novelty but not inventive step. Filing a utility model application under the PCT provides the advantage that substantive objections may be foreseen early in the process. The National Stage may be entered prior to the 30th month in order to shorten the prosecution period and to allow a longer protection period in Mexico.

In those cases that were filed as patent applications, in which during the Substantive Examination it is determined that they definitively do not comply with the requirement of inventive step and that therefore cannot be the subject of a patent grant, it is possible to evaluate the option of its transformation into a utility model application. In order to make such transformation, the utility model definition and requirements mentioned above need to be complied with. Additionally, it will be necessary to convince the Examiner to require this transformation in the corresponding Official Action. This process is evidently more difficult than making such decision beforehand.

Because of the above reasons, to file a utility model application instead of a patent application might be a highly convenient alternative, especially when the applicant knows beforehand that his cases may face strong inventive step objections.

As it has been mentioned, this IP right is a very important alternative not to leave a product completely unprotected against potential competitors, yet it is not currently very often used due to the lack of knowledge about the same and because of the diversity of requirements and countries where there is an equivalent IP right or figure. In Mexico, during years 2012 and 2013, 90%2 of the utility model applications filed at the IMPI came from Mexican applicants. This fact shows the low level of awareness of foreign applicants about the advantages of filing utility models in Mexico.

Besides Mexico, some of the countries in the world where the figure of utility model is available include Argentina, Australia, Brazil, China (including Hong Kong and Macao), Finland, France, Germany, Italy, Japan, Portugal, Republic of Korea, Russia and Spain3.

Finally, it is important that applicants seeking protection for their inventions and developments in different parts of the world have in mind the benefits of protection by means of the utility model in general, and particularly for Mexico, that utility models are an advantageous and convenient alternative for protection when the inventive step under patentability requirements is compromised.

Footnotes

1 http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm

2 IMPI in 2013 figures

3 http://www.wipo.int/sme/en/ip_business/utility_models/where.htm

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Authors
Octavio Espejo
Jorge Juárez
 
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