Comparing the American and Mexican practices on eligibility

On January 7 2019, the US Patent and Trademark Office (USPTO) released revised guidelines for patent eligibility mainly to incorporate a modified so-called Alice/Mayo test resulting from decisions at the US Supreme Court, triggering a discussion as to if, or to what extent, the guidelines would provide consistency and predictability in the examination of inventions in the USA.

It is well known that the practice in major jurisdictions such as that of the USPTO tends to impact, at least to a certain degree, the practice and criteria in other countries. Therefore, another interesting debate is whether the revised US guidelines would be considered closer to or further from the current practice of other countries. It is also interesting to consider whether they form a pattern to be followed.

Certainly Mexico has a tradition of following patentability criteria of some foreign patent offices, especially the EPO and the USPTO. This article intends to provide a comparison between US patent eligibility guidance and Mexican law and practice in an effort to try to contribute to the mentioned debate by listing some of the more noteworthy similarities and differences between the compared frameworks.

An interesting aspect of the US examination guidelines is the provision concerning the principle of compact prosecution under which each claim should be checked for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirements. Thus, examiners should state all non-cumulative reasons and bases for rejecting claims in the first office action, including eligibility, novelty, inventive step, utility, double patenting etc.

Mexican examiners tend to do the opposite regarding some aspects of the examination process. Specifically, they might not proceed with examination of novelty or inventive step when they have no access to one or more prior art documents, or when they find lack of clarity in the specification or in some claims, or even when they consider that the claims are directed to non-eligible subject matter, or when they find double patenting, this latter dimension being very common in the case of divisional applications. As such, it is not rare that the first office action is issued merely to request documents and/or clarifications and/or arguments as to how the claimed subject matter is eligible etc. As nothing in the law seems to prevent examiners doing so, it would be desirable for the Mexican Patent Office (MPO) to implement an approach similar to the US one, since as the US guidelines state, failure to follow this approach can lead to unnecessary delays in the prosecution of applications.

At least among local practitioners, there is consensus that having written examination guidelines would benefit the Mexican patent system. As proved by other jurisdictions, written guidelines usually help to set up common grounds for discussion when patent eligibility becomes an issue, especially when guidelines are binding at least for some authorities as is the case at the USPTO. For example, the Alice/Mayo test is mentioned by the guidelines as "the only test that should be used to evaluate the eligibility of claims under examination." Unfortunately, the MPO has historically been reluctant to publish guidelines for examination and, for the time being, it does not seem to be inclined to change its position.

One of the virtues of guidelines is that they do not need to be immovable. They can be drafted in view of the interpretation of the law at some point in time. The interpretation of some aspects might change, especially with case law, and the corresponding changes can be incorporated into the guidelines as recently done by the USPTO. Understandably, due to the particularities of a civil law jurisdiction, not all case law can merge with administrative guidelines, but at least part of it can be merged, needing no more than continuous updates.

Unlike the US and most jurisdictions, Mexican law contains a definition for "invention". The definition stipulates that an invention is "any human creation allowing the transformation of matter or energy existing in nature for use by man and for the satisfaction of his concrete needs." This definition is broad enough to cover both patentable and non-patentable inventions. Favourably, it helps to exclude certain subject matter not complying with the basic standard of transforming matter or energy existing in nature. In the context of the US guidelines, this subject matter would fall within some of the so-called judicial exceptions, specifically, abstract ideas, which according to the guidelines include fundamental economic practices, certain methods of organising human activities, mathematical relationships or formulas etc.

There is a list of matters which are not regarded as inventions in Mexico, including theoretical and scientific principles; discoveries consisting in disclosing or revealing something already existing in nature, even if previously unknown by humankind; schemes, plans, rules and methods for performing mental acts, games or business; mathematical methods; computer programs; forms for the presentation of information; aesthetic creations and literary or artistic works; surgical, therapeutic or diagnosis methods applicable to the human body and those related to animals; and non-inventive juxtaposition of inventions. Moreover, the law excludes the following subject matter from patentability: essentially biological processes for the production, reproduction and propagation of plants and animals; biological and genetic material as found in nature; animal breeds; the human body and living parts thereof; and plant varieties. Mexican law also contains exclusions for content which is contrary to public order, morality and good standards, but these are left out of the current discussion because they are subject to each jurisdiction's independent criterion.

As might be inferred, many of the listed matters fall within the judicial exceptions in the US guidelines, i.e. laws of nature, natural phenomena, products of nature and/or abstract ideas. The focal difference is that these matters have been declared as non-inventions or excluded from patentability in Mexico by law, while the ineligibility of the same in USA results from US Supreme Court's decisions, the issuance of which usually involves vast discussion.

Unlike the US and most jurisdictions, Mexican law contains a definition for “invention”. The definition stipulates that an invention is “any human creation allowing the transformation of matter or energy existing in nature for use by man and for the satisfaction of his concrete needs

On a side note, the US congress has expressly prohibited patents on humans per se through the Leahy-Smith America Invents Act, which seems in-keeping with Mexican law excluding the human body from patentability. Additionally, the US guidelines make clear that naturally occurring products and those not markedly different from their naturally occurring counterpart are not patent-eligible. This is in-keeping with Mexican law considering some discoveries consisting of disclosing or revealing something already existing in nature as non-inventions, as well as with the exclusion of biological and genetic material found in nature and the living parts of the human body from patentability.

On the other hand, according to the US guidelines, the US Supreme Court has held that patentable subject matter can include newly developed plant breeds, even though plant protection is also available under the Plant Patent Act and the Plant Variety Protection Act. Meanwhile, Mexican law excludes plant varieties arguably under the rationale that there is sui generis protection via plant variety registration.

Interestingly, surgical, therapeutic or diagnosis methods are eligible subject matter at the USPTO. The guidelines state that by showing "substantial utility", inventions define a "real world" context of use and are patent eligible. It is well known that therapeutic and diagnosis method claims can be redrafted into Swiss-style or EPC-2000 format claims, and that it is difficult to redraft surgical method claims without losing the essence of their being invasive to humans and/or animals, and therefore considered as non-inventions under Mexican law.

One of the relevant points of divergence between the US guidelines and Mexican practice is eligibility of business methods. As already mentioned, business methods are not regarded as inventions under Mexican law. By contrast, the US guidelines clearly state that business methods are not excluded categories of subject matter. Moreover, the guidelines indicate that the US Supreme Court has concluded that a business method is simply one kind of method that is, at least in some circumstances, eligible for patenting.

Given the diverging framework, in practice, the MPO has decided to follow the EPO's criteria more and has repeatedly established in office actions that business methods are not eligible even if implemented by technical means such as a programmable device or computer system.

However, there is another aspect regarding eligibility of some methods. Firstly, the MPO has expanded the business method exclusion not only to methods in which a monetary transaction is performed but to other related methods including some administrative processes such as those in the fields of accounting, finance, management, advertising, and marketing. Some methods in these fields, especially, some financial methods and management methods might be broad enough to constitute an abstract idea. Under the principle of pre-emption established by the US Supreme Court one may not patent every substantial practical application of a concept such as an abstract idea.

Accordingly, following the amended flowchart for the US eligibility test, these cases would pass step 1: "is the claim directed to a process, machine, manufacture or composition of matter?" However, they will need to undergo both step 2A: "is the claim directed to a law of nature, a natural phenomenon, product of nature, or an abstract idea?" and step 2B: "does the claim recite additional elements that amount to significantly more than the judicial exception?" Even assuming that they are implemented by a computer system, the guidelines state that mere physicality or tangibility of an additional element or elements to a judicial exception is not a relevant consideration in step 2B, and the US Supreme Court has explained that mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility. This is because allowing a claim reciting a computer system configured to implement the relevant concept would permit an applicant to claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. In some cases, this criterion is similar to that mentioned above in Mexican practice stating that the implementation of a non-eligible method by a programmable means does not render the method patent eligible.

As to software, Mexico excludes programs for computers from patentability. However, the MPO has been developing criteria so that the exclusion does not encompass any invention involving software. Practice shows that computer-implemented inventions having technical character and making a technical contribution do not fall within the statutory exclusion. A review of both the USPTO general examination guidelines and the special guidance for examining computer-implemented functional claim limitations, also released on January 7 2019, shows that criteria for patent-eligibility for computer-implemented inventions not related to matter regarded as non-inventions in Mexican law, such as schemes, plans, rules and methods for performing mental acts, games or business, and mathematical methods, became more harmonised in a way among the jurisdictions under discussion, especially with the implementation of step 2B of the test – the search for inventive concept. It is foreseeable that though historically the MPO has been more similar to the EPO regarding computer-implemented inventions, US patents granted under the revised test will be more emphatic in including additional elements (limitations) directed to integrate concepts into a specific practical application. These additional elements are expected to reflect an improvement in the functioning of a computer or an improvement to other technology or technical field as requested by the revised US guidelines, elements which generally are deemed helpful to demonstrate the existence of technical character of a computer-implemented invention under Mexican practice.

As can be seen, despite all international harmonisation efforts, when it comes to patent eligibility standards, particularities in each jurisdiction might not allow criteria to be generalised. However, it is interesting to identify similarities and discrepancies. In this case, the revised US guidelines from the USPTO, specifically, step 2B of the eligibility test, seem to make US criteria closer to that being followed by the MPO regarding eligibility of some methods and some computer-implemented inventions.

On the other hand, good practices from one office might be desirable for other offices. In this case, the publication of guidelines from the USPTO and the revision of these in court decisions are advantageous. Undoubtedly, a similar approach in Mexico would not only set up grounds for a discussion on patentability locally, especially if the guidelines were binding as they are in USA, but would also allow practitioners and shareholders involved in the Mexican system from other countries to be able to study and compare Mexican criteria with criteria abroad.

Victor Garrido
		Victor Garrido is head of the patent department at Dumont. He is an industrial chemical engineer, with a specialisation in polymers and intellectual property law. He has been involved in patent matters for 18 years, working for some of the most prestigious firms in Mexico. He has handled both the administrative and technical aspects of patents, industrial designs and utility models, including prior art searches, drafting and filing applications, counselling in both formal and substantive examinations, technical opinions on patentability, and clearance analysis and opinions for litigation. He has published articles in some of the most renowned international IP magazines and has participated as a panellist in international events. He is member of professional national and international organisations, such as the AMPPI, AIPPI, INTA, AIPLA and AIPF. He speaks Spanish and is fluent in English.