Tuesday, 26 October 2010

Technical data requests and patent examinations in Mexico

Substantive patent examinations carried out by the Mexican Institute of Industrial Property include assessments of inventions in the fields of biotechnology, chemistry and pharmaceuticals, where it frequently happens that applications lack the technical data needed to demonstrate the pharmacological effect of the substance or use in question, whether because an applicant did not have time to perform the necessary tests while developing the invention or could not carry such tests out at the time of application.

While the inclusion of technical data is an important demonstration of the effect of a novel compound or use and can expedite the patenting process, Mexico's Industrial Property Law and implementing regulations do not require it.  Examiners do sometimes require such data before they officially recognise the effect in question on the basis that, without it, the enhanced or unexpected effect is not duly exemplified in the application and the claim is not clearly made out. In particular, examiners commonly require technical data as evidence of a claimed effect to distinguish it from similar effects of structurally related compounds or the therapeutic effect of known compounds.

It is said to be increasingly common for examiners who are not persuaded of the inventive step in an application to issue unfounded official rulings that there is insufficient support for the patent claim, thus declining to recognise the claimed inventive step.  Refusal of a patent application in this circumstance excludes valid and patentable claims and may result in the waste of years of work and investment.  Applicants faced with official requests of this nature should be aware that the law does not require them to submit technical information in addition to that disclosed in the application.

Applicants should indicate to the examiner the difficulty of performing the required tests and the time and money that would be required. If it has no additional technical data to submit, the applicant should ask the examiner to consider the arguments that it has filed in order to prevent the application from being delayed unnecessarily or even rejected.

Source: "Filing additional technical data during patent examinations" by Jorge Uscanga (Becerril, Coca & Becerril SC), published in International Law Office, here.

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