The patentability of computer-implemented inventions is again being questioned worldwide, driven mainly by a series of court decisions from our northern neighbour, for example Alice Corp v CLS Bank International. This article sets out an analysis of the situation in Mexico from three different perspectives: valid law; the evaluation criteria of computer-implemented inventions; and, recent trends regarding the number of patents granted by the Mexican Institute of Industrial Property (IMPI) for this type of development.
First, it is important to remember that computer-implemented inventions comprises business method patents, and software patents. However, within this classification, there are also methods, processes and systems unrelated to these patents which operation depends, or is based on the use of a computer.
As with the majority of Latin American jurisdictions, Mexican law foresees certain patentability exceptions (subject matter eligibility in international terms). In this sense, Article 19 sections III, IV and V of the Industrial Property Law (IPL) establish that the following will not be regarded as inventions: schemes; plans; rules and methods to perform mental acts, games or businesses and mathematical methods; computer programs; and formats for presenting information.
On the other hand, Article 28 section IV of the IPL regulation establishes that the description of the invention should allow the comprehension of the technical problem, "even though it is not expressly designated as such". Whereas, in Article 29 section IV, it establishes that the claims should be drafted as a function of the technical features of the invention.
"Mathematical and business methods are not regarded as patentable inventions in Mexico"
Based on the above, it can be noted for example, that mathematical and business methods, and those used to perform games, are not regarded as patentable inventions in Mexico. However, in reality, most of these methods are implemented on a computer, bringing them closer to the patentable subject matter boundary. Under some circumstances, some developments containing a so-called business method may obtain a patent, as the patentable subject matter may lie in the technical contributions involving the implementation of such method in the computational environment.
As in the rest of the world, this particular area of patentable subject matter was excluded. Such developments are considered mental acts, which would need a human to make decisions; which, of course, would lead to unenforceability and a misuse of the patent system by giving a monopoly to think. However, when such decisions are no longer made by humans, but by computers (which sometimes offer a smarter solution, but not always), the line between a mental act and an invention becomes unclear.
More and more companies are developing impressive technologies that are implemented in computers or devices that include information processing means, and many of these inventions have been allowed as patentable subject matter in Mexico and elsewhere. How is that possible? Let's now turn to the practice at the Mexican patent office.
Mexican examiners' criteria, as in the majority of jurisdictions, are not entirely clear and have evolved in recent years, becoming closer to those applied in Europe. However, there is the constraint that Mexican legislation does not establish the proviso "as such" contained in Article 52(3) of the European Patent Convention (EPC) and the definitions and legal basis to evaluate what Europeans understand as "technical character", "technical effect" and "technical contribution" cannot be found.
Some years ago, IMPI formed a special group of examiners in charge of evaluating the patentability of this type of invention. This was mainly in the electrical coordination substantive examination area, with the aim of homologating criteria and having a second point of view before granting or rejecting a patent application related to the exceptions of Article 19 of IPL. Likewise, this group is responsible for continuously studying the topic to delineate the IMPI stance regarding computer-implemented inventions. Based on this, working sessions have been established by expert practitioners on the topic in Mexico in order to make criteria clearer and provide certainty to users of the Mexican system.
The patentability evaluation process of a computer-implemented invention is the following. First, the problem being solved by the development must be identified; occasionally more than one problem may be identified in the same application, whether this problem really is a technical problem is then determined. With a complete understanding of the application subject matter, steps are taken to identify whether it complies with the invention definition contained in Article 15 of IPL, which is "all human creation allowing to transform matter and energy existing in nature, for the use of humanity and to meet its concrete needs" and whether it does not rely on the assumptions of Article 19 of IPL.
In this sense, the debate is centered on whether the problem solved is in the computer science area or an issue related to human necessity that is actually solved through computers, which simply enables such a solution.
"When such decisions are no longer made by humans, the line between a mental act and an invention becomes unclear"
Regarding claims, examiners evaluate the elements or features necessary for the resolution of the technical problem. Typically, features related to the resolution of business, administrative or merely mathematical matters are often discarded; leaving only the patentability evaluation of technical characteristics understood by the examiners as computer science matters. It is precisely at this point where the matter eligibility boundary becomes blurred. Since, if the claim is not evaluated as a whole in the context of a human need, specific contributions with novelty and inventive step may well be rejected even if they do respond to a human need.
To improve the chance of success during substantive examination for this type of development, it is necessary to state the technical problem being solved as a human necessity, to make sure that the technical characteristics are evident in the claims, and to communicate to the examiner exactly how the purpose of the invention is achieved, regardless of the field in which it is applied.
Unsurprisingly, searches for patents in international databases with keywords related to computers and methods, will generally return results in two main international classes to the second levels of their corresponding general class: G06 Computing, calculating, counting and H04 Electric communication technique.
In July 2013, the total number of granted patents in Mexico for the mentioned classes in the previous 10 years (July to July) was 2873 out of 5371 filed patent applications for class G06 (53.11% rate). On the other hand, 6754 patents out of 8505 filed applications were granted for H04 (79.41% rate). The overall patent numbers in Mexico for the same period yield around a 65% grant rate.
"Mexico does offer possibilities of protection for computer-implemented inventions"
The numbers say it all
Even though Mexico is not immune from the worldwide debate on computer implemented inventions, the practice and the numbers make it very clear that Mexico does offer possibilities of protection for computer-implemented inventions.
It is also very clear that inventions related to computing, calculating or counting pertaining to class G06 are more difficult to obtain than the average Mexican patent application, while patents relating to electronics (presumably drafted as systems that require electric communication) are more easily granted at an even higher rate than the average.
Octavio Espejo is a mechanical-electrical engineer. He graduated from the Instituto Tecnológico y de Estudios Superiores de Monterrey (ITESM) in 2003. He joined Becerril Coca & Becerril in 2005 and became an associate to the firm in July 2012.
Octavio is a member of the Mexican Association for the Protection of Intellectual Property (AMPPI), where he actively participates on the patent committee, focusing his efforts on business method and software patents, and in coordinating the formal examination sub-committee. He is also a member of International Association for the Protection of Intellectual Property (AIPPI).
As administrative patent manager, Octavio focuses his practice on the areas of filing and formalities of patent, utility model and industrial design applications. Because of his technical background and his involvement in technical patent analysis in the mechanical and electrical areas at the beginning of his career at the firm, he contributes valuable prosecution assistance to our clients before the filing of their applications.
|Hector E Chagoya|
Hector E Chagoya is a chemical engineer. He joined Becerril Coca & Becerril in 1997 and became a partner of the firm in 2010. As director of patents and technology, he is responsible for all the patent work of the firm.
From 2012, Hector has been included in the IAM Patent 1000 – The World's Leading Patent Practitioners's list of top 1000 outstanding professionals worldwide in the patent and licensing area.
Hector has occupied leading positions in the Licensing Executives Society International (LESI) and its Mexican chapter, and is an active member of other IP, technology transfer and chemical engineering organisations.
The first Mexican to obtain the Certified Licensing Professional certification, Hector regularly contributes to recognised IP publications.