Mexico: Enablement in patent practice

Enablement was considered in Mexico in the amendments to the Mexican patent law on October 1 1994 and again on September 20 2010.

With the amendment of October 1 1994, the Mexican Law required a description of the invention that shall be clear and complete to be fully understood and where appropriate to serve as a guide for a person with average skill in the art to make it. Furthermore, the description shall mention the best method known by the applicant to carry out the invention when this is not clear from the description thereof.

The amendment of September 20 2010 also considered the inclusion of information that exemplifies the industrial utility of the invention. However, this information is only required when the description is not sufficiently clear or complete for a person with average skill in the art to fully understand the invention and to be able to make it.

Despite this guidance and the fact that the Patent Office is supposed to recognise in good faith an applicant's disclosure (it not being not examiner's role to determine the veracity of the application), lately the most common practice in Mexico is to consider as unclear any subject matter that has been claimed in the invention but has not been exemplified or experimentally demonstrated in the description. Some examiners accept complementary experimental information during the substantive examination as long as there is a connector idea that allows the relation of that information with what is described. However, since there is no guideline for examiners in the Patent Office, there is no certainty as to how overcome these objections.

In conclusion, it is not mandatory to include examples as evidence of the industrial utility or enablement when applications include sufficient description of the invention, but in practice, some examiners object when examples or experimental evidence are not included.

Georgina Flores

OlivaresPedro Luis Ogazón No 17Col San Angel01000 México DFTel: +5255 53 22 30 00Fax: +5255 53 22 30 01olivlaw@olivares.com.mxwww.olivares.com.mx