All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

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

The executive director lost a key vote at a meeting of the EUIPO management and budget committee on Tuesday, November 22
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Law firms’ reliance on billable hours is hampering diversity and wellbeing, suggests INTA, but both sides of the profession must club together to enact change
In his first interview in the role, Klaus Grabinski outlines how the UPC will deal with outstanding issues such as potential conflicts and problems with the CMS
Daniel Chew speaks to Managing IP about his plans for the coming year and how UK attorneys can seize the day at the UPC
It’s easy for lawyers to drag their clients to court, but settling disputes amicably could often be a win-win scenario for everyone
Qualcomm’s vice president and legal counsel, John Scott, reflects on the rise of litigation finance and what he wants in private practice lawyers
Klaus Grabinski addressed the controversy over part-time UPC judges in an exclusive interview with Managing IP
Counsel at four US law firms say forming relationships, sending legal updates and demonstrating data have helped them snag a lot of work
Blockchain-related patent applications are on the rise, but could run into Section 101 challenges