Deciphering Mexican patent prosecution

July 13, 2010

BY OSVALDO AMARAL

MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, OCTOBER 2007

When it comes to prosecuting a patent application before the Mexican Patent Office, the applicant should remember that the Office does not undertake a completely independent substantive examination of patent applications. Mexico’s Law of Industrial Property contemplates that the Office may accept or require the findings of substantive examinations conducted by foreign patent offices or, where appropriate, a copy of the patent granted by foreign patent offices.
In practice, the grant or allowance of a US or European counterpart patent application may accelerate the substantive examination and grant of a Mexican patent application. However, there are some instances in which a set of US or European granted or allowed claims may be rejected by the Mexican Patent Office. In this respect, US granted or allowed claims are rejected if they are not considered patentable under Mexican patent law and practice such as, for example, claims directed to computer programs per se, pure business methods, methods of playing games or of presenting information and surgical, therapeutic or diagnostic methods.
Likewise, European granted or allowed claims may be rejected if the counterpart European patent is the subject of an apposition proceeding before the EPO whose resolution is not yet final.

Even when a counterpart US or European patent has not been granted or allowed, the deference given by the Mexican Patent Office to USPTO or EPO prosecution is such that substantive office actions issued by the Mexican Patent Office emulate the substantive rejections raised by USPTO or EPO examiners. In the absence, though, of a counterpart US or European patent application being prosecuted – on which the Mexican Patent Office could base substantive examination – there has been limited recognition of the prosecution decisions made by the Australian Patent Office, the Chinese Patent Office and the Russian Patent Office.

Taking note of these considerations, an applicant will be in a much better position to assess the likelihood and speed in which a Mexican patent application will be granted.