Patent Prosecution and Enforcement in México

Líderes en Propiedad Industrial e Intelectual en países de habla Hispana y Portuguesa IP Leaders in Spanish and Portuguese speaking countries

PATENT PROSECUTION AND ENFORCEMENT IN MEXICO

Erick Moreno, Senior Patent AgentClarke, Modet & Cº Mexico

© 2012 Clarke, Modet & Cº



Theoretical or scientific principles

Business Methods

Schemes, plans, rules to perform mental acts or

games

Mathematical Methods

Literary WorksComputer Programs Surgical, therapeutic

treatment or diagnosis methods

Discoveries found in nature


A Patent is in force for 20 years from filing date in Mexico or from the International filing date for PCT cases.

Usual requirements:•Novelty•Inventive step•Industrial Applicability



• For Mechanical and Electronic inventions, the average is 3-4 years.

• For Pharmaceutical, Chemical and Biotech inventions, the average is 4-6 years.

• If the Application has been filed under the PCT, the examination starts earlier (due to the International Filing date)


Software claims

Computer readable medium claims

Processors with programmed modules

Execution of instructions or codes

Business claims

Computer systems referring to currency exchange

Treatment Methods

Any method for treating any disease or condition



• United States. Permanent.• Japan. Regular and PCT-PPH.• China Regular and PCT-PPH.• South Korea.• Spain.


1. Have an allowed claim or a granted patent in the OFF.

2. The examination of the Mexican Application should not have begun; i.e., once an Office Action is issued by the MPO, a PPH request is not permitted.

3. The MX application must have been published.

4. The Third-party observation period should be ended.

5. The claim conformation must not contain non-statutory subject-matter.


File Voluntary Amendments by amending the claims as follows:

1.To overcome any deficiencies in the International Search Report (ISR) and the Written Opinion. (if not already entered in National Phase)

•If early examination is desired.

2.Amend the claims to conform to any granted parallel Application, corresponding to the claimed priority.

•Early allowance may be requested.




There are no specialized courts in IP. The Civil judges deal with infringement actions and the criminal judges with the crime of infringing an IP right


The judges make their decisions based on the evidence filed by the applicant supported by technical expert opinions and documents.

In order to file an infringement action, the patent application must be granted on behalf of the plaintiff

The compensation for infringement actions are retroactive


The owner of the IP right should:Record the changes in the ownership so the current owner is able to enforce the rightsUnless otherwise stated in the license agreement, licensee will have the right to enforce the IP rightsSend cease and desist letters. For patents, it is possible to send such letter form the publication date of the applicationMark the products indicating that there is a pending patent application or a granted patent.Review the validity of the rights before initiating any legal action or before a cease and desist letter is sentInvestigate the infringer’s activities and rights, avoiding adverse surprises and designing the best strategy for each case.



Does MX has a previous disclosure period?

Yes, 12 months.

Applies for any information disclosed by any public means, does not apply for patent publications.

Is it possible to file amendments after filing?

Yes, for the complete application, as long as they:Do not extend the scope of the application originally filedAre completely supported in the original specificationCorrect formal or minor errorsAre filed before receiving the Notice of Allowance


Is there any opposition system?

Not as such, it’s just a third-party observations period.

Only for aiding examination. A third party might file documents 6 months after publication and the MPO will take them as a support, if applicable, for the examination

Under which circumstances compulsory licenses are requested?Refusal to dealLack of exploitationUnfair competition practiceSanitary emergency, national security, national emergency


Is there a deadline to file Divisional Applications?

Yes, before paying the granting fees of the pending application and only if during examination lack of unity of invention has been identified.

Are continuation-in-part Application permitted in Mexico?

No, if the specification or claims of the continuation-in-part application are broader than the original application, or contain subject-matter that extends beyond the original one, said applications are not permitted

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© 2012 Clarke, Modet & Cº. All rights reserved. Clarke, Modet & Co. refers to the network of subsidiaries of Clarke, Modet y Compañía S.L. each of which is a separate and independent legal entity

Documents

Patent Prosecution and Enforcement in México