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 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Expert AnalysisLocal Insights

Product-by-process claims: a Mexican approach

Sponsored by


Erika Rocío Santillán of Olivares explains the legal position in Mexico with regard to the protection of inventions through the identification of a novel technical step in the manufacturing process

There are certain inventions in which it is impossible to define a claimed product other than in terms of a manufacturing process. The claims protecting these inventions are known as product-by-process claims.

In other words, these products are defined by a manufacturing process which includes a technical step that confers technical characteristics to the product, which in the same way provides novelty and inventive step to the matter sought to be protected.

Product-by-process claims have the following structure: "Product X characterised by A, B, C..., which is prepared/obtained/obtainable by process Y.”

Mexican practice

In Mexico, product-by-process claims are allowed in practice. The country’s previous Industrial Property Law, which applies to all patent applications filed in Mexico before November 5 2020, states in its Article 45, Section I that the following can be protected: "The claims of a specific product and those related to processes especially conceived for its manufacture or use [emphasis added].”

Likewise, the current Federal Industrial Property Protection Law, which entered into force on November 5 2020, mentions in its Article 55 that "if the subject matter of the patent is a process, the patent confers the right to prevent other persons from using that process and from using, selling, offering for sale or importing the product obtained directly from that process, without their consent [emphasis added].”

Product-by-process claims usually confuse inventors and applicants. Thus, when a product is defined by its manufacturing method, it is relevant to review whether the product obtained is identical to other products that are already known, which will help us not to lose sight of the novelty of the product itself.

Onus on the applicant

It is a reality in several jurisdictions that when a product-by-process-type invention is sought to be protected, it is the applicant's responsibility to provide evidence that the parameters of the process give rise to the claimed product. This is achieved by demonstrating the clear differences in the technical characteristics (properties) of the products.

Finally, it should be noted that a product is not patentable if it is not new, even if the products are manufactured by different processes.

Even for a new product, if the process can be used to manufacture a different product, the manufacturing process and the product produced by the process would be reviewed as two different inventions and would be subject to restrictions.

more from across site and ros bottom lb

More from across our site

Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
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 FTC’s plans to scrutinise improperly listed Orange Book patents could make these listings more important in litigation, but firms should be looking at this anyway
Counsel at Debevoise & Plimpton explain how they helped food delivery business Grubhub avoid a preliminary injunction at the Court of Appeals for the Seventh Circuit
European lawyers tell Managing IP how the legal market is reacting to the first few months of the UPC and why cases are set to take off
The ban could be extended or cancelled, depending on whether Judge Pauline Newman cooperates with an investigation, the Judicial Council of the Federal Circuit stated
Sources say some China-based lawyers are prepared to take large pay cuts to join stable practices, but most firms are sceptical about new hires