PATENT PROSECUTION AND ENFORCEMENT IN MEXICO

PATENT PROSECUTION AND ENFORCEMENT IN MEXICO
Erick Moreno, Senior Patent Agent
Clarke, Modet & Cº Mexico

IP Leaders in Spanisheand Portuguesehabla Hispana ycountries
Líderes en Propiedad Industrial Intelectual en países de speaking Portuguesa

Discoveries found
in nature

Theoretical or
scientific principles

Business
Methods

Mathematical
Methods

Computer
Programs

Literary Works

Schemes, plans, rules to
perform mental acts or
games

Surgical, therapeutic
treatment or diagnosis
methods
© 2012 Clarke, Modet & Cº

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 nonstatutory subject-matter.


File Voluntary
claims as follows:

Amendments by amending the

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 rights
Unless otherwise stated in the license agreement, licensee will
have the right to enforce the IP rights
Send cease and desist letters. For patents, it is possible to send
such letter form the publication date of the application
Mark 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 sent
Investigate 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 filed
Are completely supported in the original specification
Correct formal or minor errors
Are 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
requested?
Refusal to deal

circumstances

compulsory

licenses

are

Lack of exploitation
Unfair competition practice
Sanitary 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
Mexico?

Application

permitted

in

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


Argentina - Brazil - Chile - Colombia - Mexico - Peru - Portugal - Spain - Uruguay - Venezuel

© 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

PATENT PROSECUTION AND ENFORCEMENT IN MEXICO

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