Recently, Mexican examiners have faced controversy over how to determine the patentability of ‘new’ technologies; in particular, the best strategies for evaluating the patentability criteria of computer-implemented inventions that, in most cases, are automations of well-known methods.
The most common rejections of such inventions issued by the Mexican Institute of the Industrial Property (MIIP) make reference to a lack of a technical problem disclosed in the specification of the invention, if the invention falls into the prohibitions of Article 19 of the Industrial Property Law (IPL), combined with the lack of an inventive step.
We will focus on the lack of inventive step as a reason for an application being rejected, because of its importance. Additionally to whether the patent application lacks disclosure of the technical problem, or whether or not the invention is considered an invention according to Article 19 of the IPL, it is essential to clearly understand whether or not the automation of a known method complies with the universal patentability criterion of having an inventive step.
“There is a tendency to reject the inventive step of these computer-implemented inventions because of an erroneous assertion that though the method is carried out by a computer system, the elements and features involved in such a system are well known in the state of the art and therefore that the computerised implementation lacks inventive step.”
To continue reading, you need a subscription to WIPR. Start a subscription to WIPR for £455.
In-house feature articles, the archive and expert comment require a paid subscription. Subscribe now.
Want to give it a try? We are offering a two week free trial to the WIPR website – register and select “Free Trial” to begin access to the full WIPR archive and read the latest news, features and expert comment. Begin your free trial here.
Is your 2 week free trial about to end? Upgrade to a 12 month subscription for £455 now.
If you have already subscribed please login.
If you have any technical issues please email tech support.
New technologies, patents