Mexico: Biological Patents In Mexico

Last Updated: 12 July 1999

Most Read Contributor in Mexico, November 2018

With the present Mexican Patent Law, which entered into effect on October, 1994, we may say that although in the biological field there are some specific exceptions, it is possible to consider that practically all types of these inventions are susceptible of patentability in Mexico.

Said exceptions are basically represented by the following non-patentable inventions according to Article 16 of said Law:

a) Essentially biological processes for the production, reproduction and propagation of plants and animals (Breeders' rights).

b) Naturally occurring biological and genetic material.

c) Animal races.

d) The human body and the living parts constituting the same.

e) Plant varieties.

However, taking into consideration that the above provisions do not refer to processes involving molecular biology, genetic engineering and the like, it may be concluded that any invention related to said processes is susceptible of patentability in our country.

It is important to point out that those patents which are related or refer to living organisms can be defined as biological patents. However, the purpose of having a patent of a living organism or organic matter is directly related with the biotechnology, which may be defined as the group of techniques which object is the industrial exploitation of the microorganisms, animal cells, vegetables and components thereof, it is to say, the industrial exploitation of the living organisms and in general of the organic matter, or as defined by the Office of Technology Assessment (OTA), the group of techniques using living organisms (or a part of them) for manufacturing or modifying products, to enhance plants or animals, or to develop microorganisms for specific uses. With the above in mind, it would be more appropriate to refer to a biological patent as a biotechnological patent.

Nowadays, the strategic role of the biotechnology in the innovation and development in the industry is extremely important. The development of the bioindustry (the evolution of the molecular biology and the biochemistry research) allows to locate the biotechnology as a great group of biological technologies in the core of the markets war, with a potential of markets without limits and having a wide application in areas such as Health Sector, Pharmaceutical, Littering of Animals, Manufacturing of Anticontaminant Products and Minerals Extraction among others.

At the present time, there are four sectors wherein the modern biotechnology can be applied, namely:

1.- Techniques for the tissue and cell cultures.

2.- Biotechnological processes.

3.- Techniques which apply the microbiology for the selection and culture of cells and microorganisms.

4.- Techniques for manipulation, modification and transference of genetic materials (genetic engineering)

Moreover, the biotechnology allows a new domain of the biological processes and their industrial applications.

Thus, different categories of biological patents (assisted by the modern biotechnology: the molecular biology) could be then stated.

ACTIVITY AREAS OF THE BIOTECHNOLOGY

a-) Patents in the chemical area (ethanol, ketone, butyl alcohol, organic acids, enzymes, biopolymers).

b-) Patents in the pharmaceutical area (antibiotics, diagnostic agents (antibodies, enzymes), enzyme inhibitors, steroids, vaccines).

c-) Patents in the energy area (ethanol, methane (biogas), biomass).

d.- Patents in the food area (starting cultures, alcoholic beverages, functional modification of proteins, additives (antioxidants, colorants, flavors), aminoacids and vitamins, starches and pectines, toxins elimination).

e-) Patents in the agricultural area (veterinary vaccines, ensilage and compost, microbial plaguicides, rhyzobia and other nitrogen fixators, mycorrhiza, tissue and cell cultures, phyto hormones).

f-) Patents in the mining area, (biolixiviation, oil recovery, exploitation of metals).

g-) Patents in the services area (water purification, effluents treatment, waste handling and using).

As it can be seen from the above, it is completely clear that the biotechnology, because of its importance, is and must be considered within the "new technologies" which have lately originated a real revolution or breakthrough of the known technological strategies until now.

Now then, due to the importance of the biotechnology-related inventions and knowing that for the inventors it is also extremely important to protect said inventions in strategic and specific countries in accordance with their interests, it can be stated that in addition to those provisions provided for by Article 16 of the Law, there is not any other restriction applicable in Mexico for the patentability of inventions in the biotechnological field. In other words, any biotechnological invention not falling within the express prohibitions of said Article 16 of the Law can be considered as susceptible of patentability in Mexico.

Nevertheless, it is important to stress that similarly to a mechanical invention or a method for obtaining chemical compounds, the biotechnological patents must also comply with the requirements of novelty, inventive activity (non obviousness) and industrial application (utility), since these patents will be of course subject to a substantive examination through which the Examiners will determine, in accordance with the Mexican law and criteria used for this type of inventions, the patentability of the same.

In order to be considered as patentable, an invention must not be obvious and must be novel, which in the scientific and technological development means a great accumulation of knowledge, whereby in order that something new can be produced (an idea, a process), a multidisciplinary synthesis permitting to overcome the previous knowledge must occur.

In the case of the biotechnology, said synthesis is present because the accelerated development has been possible due to the accumulation of knowledge in different disciplines (microbiology, genetics, molecular biology) as well as to the transference of knowledge between different disciplines, which phenomena are conjugated with important economical potentialities in very competitive sectors by tradition, such as the pharmaceutical sector, in which the biotechnology already assumes a strategic role.

The above is mentioned in view of the fact that the criteria for determining the patentability of a mechanical or chemical invention are not exactly the same as those used for determining the patentability of biotechnological inventions, since the complexity of these inventions, due to the different disciplines intervening in a new biotechnological innovation as well as the vertiginous development thereof, requires that the analysis of the matter claimed in the inventions during the substantive examination be really exhaustive. This fact is indeed understandable if the problems an Examiner faces to determine the novelty and inventive activity (non obviousness) of a biotechnological patent are considered, since said concepts in most cases are closely related with the prior art and are differentiated simply by a very subtle limit.

As to the industrial application (utility) requirement, and only as a comment to be taken into account, it is to be noted that Article 12-IV of the Mexican patent law states that, in order to have industrial application, an invention must be capable of being used in any branch of the economical activity. In the biotechnological patents, and particularly in the case of the genetic engineering, sometimes this requirement cannot be easily demonstrated because the technological innovations do not possess a direct industrial application and it permits that the Mexican Examiners argue based on the concept that an invention, to have utility, must set forth and claim an invention which can be operative for at least a purpose set forth in the patent application. However, such argumentation may be refuted saying that in order to satisfy the utility requirement, an invention need not be unerringly effective in its operation, since all what is required is usefulness in some instances. This is the reason why biotechnological patents may contain a considerable degree of speculation regarding uses of the basic discovery, provided that said speculation does not go too far so as to constitute an indication of fully inoperative embodiments.

Thus, the two following recommendations for filing a biotechnological patent application in Mexico should be taken into consideration:

a.-) When a biotechnological patent application is to be drafted, it is extremely important to try to distinguish the novelty and non obviousness of the matter to be claimed in connection with the prior art, as well as to point out the branch of the economical activity where the invention is to be used.

b.-) The biotechnological patent application must contain the necessary information about the obtainment of the microorganism, genetic techniques, morphology, antibiotics resistance, growing, vitamins etc., which are the conditions or requirements contained in the Budapest Treaty for the International Recognition of the Deposit of Microorganisms in Patent Matters.

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 Mondaq.com.

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

 
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
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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