Mexico: A closer look at post-filing data in patent applications
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: A closer look at post-filing data in patent applications

Sponsored by

olivares-400px.jpg
specs-6500153-1280.jpg

Rommy Morales of OLIVARES explains the key elements to consider for submitting post-filing experimental evidence

Mexican patent law does not require experimental evidence covering every embodiment within the scope of a claim. However, it provides that that the description of the invention has to disclose the invention in a sufficiently clear and complete way to allow a person skilled in the art to make it, and the best method known to the applicant of carrying out the invention, as well as the information to support the industrial application of the invention. 

Therefore, even though the claims should be considered as commensurate in scope with a reasonable generalisation of the disclosed examples, in practice, when an application does not include experimental evidence for all the embodiments, examiners sometimes raise sufficiency of disclosure, clarity, support and/or inventive step objections.

When the above-mentioned objections are raised, examiners commonly object that the disclosure in the specification is not sufficiently complete and/or it does not contain the best-known method to perform the invention. Examiners also state that the inventive step cannot be recognised due to the experimental evidence provided in the application that does not demonstrate the technical effect.

Even though Mexican law provides that the Mexican Institute of Industrial Property (IMPI) may require the submission of additional or complementary information or documentation, it does not include any specific provision about post-filing submission of experimental data. Under the local practice, post-filing experimental evidence is normally accepted as long as the said evidence is filed along with the response to the substantive office action wherein the said objections were raised, and when the alleged technical effect is expressly disclosed in or can be inferred or derivable from the originally filed application. 

Finally, it is important to bear in mind that there is no precedent case law, such as jurisprudence, regulations or guidelines about this issue in Mexico, and thus the acceptance thereof would depend on the examiner overseeing examination of the application.

 

Rommy Morales

Biologist, OLIVARES

E: rommy.morales@olivares.mx

 

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article