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
Most Read Contributor in Mexico, November 2018

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.



2 IMPI in 2013 figures


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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Octavio Espejo
Jorge Juárez
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions