The death of business methods

March 22, 2010

BY OSWALDO AMARAL, MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, DECEMBER 2009.

Following a trend in several major patent offices around the world with respect to the protection of business method-related patents, the Mexican Patent Office is shifting more decisively towards summarily rejecting applications seeking to protect such inventions.

This year, the Mexican Patent Office has issued an unusually high number of summary denials directed to applications seeking to protect business method-related inventions. Under Mexico’s patent law and practise, if an applicant is issued a summary denial, the applicant has to fight the rejection in an administrative court of appeal, which can be costly and time-consuming. A summary denial is tantamount, for example, to a final office action rejection issued by the USPTO.

 

These rejections have arisen despite arguments made during the prosecution process regarding the technical effect of the business method-related invention, such as assertions that the business method is being implemented through technical means representing more than just a simple technical automation of a pure business method.

Considering that a summary denial issued by the Mexican Patent Office may be challenged through a number of costly and time-consuming avenues, the trend is likely to result in a steady decrease in applications directed to business method-related inventions. For this reason, it is generally sound advice not to file business method-related applications.