Inventive step and computer implemented inventions


Claudia Gabriela Campos Chavelas

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.”

New technologies, patents