Mexico: The patentability of software
Inventors commonly pursue protection for steps of a method or a process to achieve a specific task because this special type of invention closely depends on software or on the implementation of software on a computer system.
Although these types of inventions have been around for many years, unfortunately the main obstacle that their owners face when seeking patent protection is that the inventions are seen as covering computer programs, which in most jurisdictions are not considered patent-eligible. Following recent court decisions in the US, many granted patents are at risk.
In this environment of patent subject matter eligibility, as long as the invention does not fall within exceptions to patentability, solves a technical problem and provides a technical contribution to the state of the art, it will receive patent protection.
Patent applications covering software-related inventions include method claims but also claims directed to a computer-readable medium (CRM), including instructions executed by a computer or a processor, which correspond to the same steps of the method.
In Mexico, CRM claims were historically commonly rejected since the examiners considered that they covered a computer program; article 19, section IV of the Industrial Property Law is clear that computer programs are not considered patentable inventions.
Nevertheless, the examiners’ criteria on such inventions have become more open and clear. Nowadays, they accept such claims as long as the method complies with the patentability requirements in our country.
It is important to maintain such claims in Mexico because in the US, and a few years ago in Europe, they were constantly used to obtain broader protection for software inventions. In fact, CRM claims were considered patentable subject matter since it was understood that they did not cover an algorithm or the computer program per se.
"COMPUTER-READBLE MEDIUM CLAIMS WERE CONSIDERED PATENTABLE SUBJECT MATTER SINCE IT WAS UNDERSTOOD THAT THEY DID NOT COVER AN ALGORITHM OR THE COMPUTER PROGRAM PER SE."
Now, in relation to the drafting of CRM claims in our country, Mexican examiners accept them as long as the contents of the CRM correspond to the implementation of a new and inventive development, specifically a method or process, which also offers a technical effect or technical contribution beyond the mere management of information, on a computer.
However, we should take care when drafting such claims as in most cases they read as “a CRM including instructions to be executed by a processor performing the steps of …”, and sentences such as “including instructions to be executed” are commonly considered by the examiners as covering a computer program.
Therefore, it is better to avoid such sentences and draft the claim so it reads “a CRM wherein the processor is configured for performing the steps of …” or use a similar phrase, so that it does not cause confusion with a computer program and the invention is not excluded from patentability.
In general terms, the above represents an advance on the examination process in our country since, in the past, such claims were definitively rejected and there was no way of protecting them in Mexico.
The position of the Mexican examiners during the substantive examination of computer-implemented inventions is evolving and becoming increasingly open to the benefit of inventors. Nevertheless, we must not ignore efforts to achieve better defined guidelines on the prosecution of this type of invention as there is still a long way to go.
Claudia Campos is a patent coordinator at Becerril, Coca & Becerril. She can be contacted at: ccampos@bcb.com.mx
