Utility And Enablement Issues In Patent Protection In Mexico.

The Mexican patent law enacted on June 28, 1991 and its amendments enacted on October 1st, 1994 contain provisions requiring the fulfillment of certain utility and enablement requirements for patents.

Although the law defines said issues in a rather generic manner, some practice has been already developed at the level of examination of pending applications by the Mexican Industrial Property Institute (IMPI) that render it important to draft patent specifications in order to show utility of the invention, that is, in order to show that the invention is operative for at least a purpose set forth in the patent application. The invention, however, is not required to be unerringly effective in its operation; all what is required is usefulness in some instances. Also, the invention is not required to be operational in the sense of the existence of a marketable embodiment. For biotechnology-related inventions, it is important not to rely excessively on speculation about possible uses, since the basic invention will be dominant with respect to inventions on uses discovered later by others.

On the other hand, in order for a disclosure of an invention to be enabling, it must contain sufficient information to permit one reasonably skilled in the art to make or use the invention from the disclosure in the patent application, coupled with information known in the art and without undue experimentation. In order to satisfy the enablement requirement, biotechnology-related patents must include the sequences of nucleotides and/or aminoacids following the WIPO Standard ST23, as well as the deposit of microorganisms with any depository authority recognized by the Budapest Treaty.

The content of this article is intended only to provide general guidelines related to this particular matter. For your specific circumstances, full specialist advise is recommended.