Mexican law and practice related to patent eligible subject matter

Patent systems worldwide are struggling in their ability to clearly identify eligible subject matter. The intensive use of computers and the advances in processing and connectivity have forced patent offices to neglect the fact that it requires a lot of creativity and inventiveness to make everything happen for people in the tangible world in a new environment where everything seems obvious to implement on a computer.

At the same time, advanced techniques in biotechnology and the ability of scientists to identify, characterise and genetically analyse microorganisms, genes and living matter in general makes most developments in this area seem to be mere discoveries and even rules of nature so they are evaluated with inevitable hindsight which disregards the fact that all of this was not possible but thanks to true inventions. A hindsight fed by the importance of the impact of such technologies in health care and a reluctance to recognize the human creativity that was necessary to reach the level of development we now enjoy.

How are patent systems reacting to this new reality? We discuss here the features of the Mexican patent system under this new environment for human creativity recognition, with reference only to statutory provisions given the scarcity of administrative or judiciary precedents available for interpreting Mexican law.

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) includes an express provision for patentable subject matter: Article 27. Mexican law (and any WTO member law) is supposed to allow patents under such basic principles and therefore, it is important to briefly analyse them as an obliged reference.

TRIPS provides for a general principle of availability to all inventions without discrimination. The first paragraph of Article 27 reads literally: "patents shall be available for any inventions, whether products or processes, in all fields of technology". It then emphasises: "patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced."

These general rules under TRIPS have very specific exceptions recited in the same article:

• protecting ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment.

• diagnostic, therapeutic and surgical methods for the treatment of humans or animals.

• plants and animals other than micro-organisms.

• essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.

Of course the same Article requires members to provide a sui generis system for the protection of plants.

It is significant that TRIPS did not address specifically computer-implemented inventions, and such inventions are not included in the exceptions of TRIPS expressly. Therefore, in principle, computer-implemented inventions should be eligible for patent protection in all TRIPS countries, unless such inventions do not comply with one of the basic novelty, inventive step (non-obviousness) or industrial application (utility) requirements also provided for in Article 27 of TRIPS.

Mexican Industrial Property Law (IPL) establishes in Article 16 the general requirements of novelty, inventive step and industrial applicability as requisites for obtaining a patent for an invention just like TRIPS and also includes exceptions to patentability regardless of whether they comply with such requirements.

But in addition, IPL offers one of the few IP pieces of law worldwide that provide for a definition of what it is considered as an invention under Article 15: "It shall be considered as invention, every human creation that allows to transform the matter or energy that exist in the nature, for the use by mankind in the satisfaction of a concrete human need." Thus, under Mexican law an invention:

This is a principle that implies that human intervention is necessary in order to have an invention and it is the base for considering ineligible subject matter discoveries and processes that existed or could have naturally occurred.

The Mexican definition implies that an invention must have the potential to cause a transformation of matter or energy but not necessarily transform them itself. This means that the invention must have a physical effect but not necessarily have a physical nature.

The satisfaction of a human need implies in principle that an actual human need is satisfied and that therefore it solves a problem that otherwise would not have been solved, at least in the same way.

In fact, the IPL Regulations further require the specification of the invention to provide an understanding of what is considered as the solution to a technical problem and thus, every invention to be protected via patent shall solve a problem or satisfy a human need.

Article 16 of IPL make ineligible subject matter the following living matter related technologies:

• Essentially biological processes for the production, reproduction and propagation of plants and animals.

• Biological and genetic material as found in nature.

• Animal races.

• Human body and the living parts that it consists of.

• Plant varieties.

These seem to be consistent with TRIPS because plants and animals "other than microorganisms" are express exceptions to patentability in TRIPS itself. However three areas of the Mexican law exceptions deserve further discussion:

Unless otherwise genetically modified, microorganisms are always the same than they were in nature and therefore this proviso is either contrary to TRIPS or must be interpreted very narrowly in regard to the proviso "as found in nature". In practice, IMPI considers that any microorganism or a gene existing in nature does not itself solve a problem unless an inventor isolates it and makes it useful for mankind, thus giving weigh to the level of human intervention behind.

Genetically modified organisms have been considered eligible matter under this provision of Mexican law and in practice IMPI interprets accordingly. However, eligibility is not as clear particularly when a technical "non-apparent" feature such as strength, compound contents or the like is used to obtain new plants or organisms through processes not implying genetic engineering. Unfortunately IMPI's practice have moved from considering these inventions eligible to the opposite, and appeal instances seem necessary to set precedents to clarify the level of human intervention necessary to reproduce the invention.

This provision was enacted in 1991, when organs were supposed to be obtained from other humans and patenting such organs might have seemed contrary to morals. "Morality" of these inventions will be assessed below but in any case science is closer and closer to obtaining a living human or animal organ without the need of taking it from another human and it seems that Mexican law goes beyond TRIPS by making human body parts ineligible subject matter. TRIPS does not exclude from patentability such kinds of invention and the definition of clear criteria on these inventions might also need appeals if and when a patent to an organ itself is actually denied.

In Mexico, Article 19 of IPL makes it ineligible subject matter for patents computer programs, business and mathematic methods and other categories such as game instructions, mental acts or presentation forms, as all these are either considered copyrights or that occur in abstract. In practice IMPI will typically reject claims directed to computer-implemented inventions through as many of these exceptions as possible, particularly if they expressly recite ineligible subject matter even if they are not claimed as such.

The developments continue evolving while our law remains still and it is certain that there is subject matter that could not be evaluated under the current regulations

However, with reference to the Mexican definition of invention of Article 15 of IPL, IMPI has granted patents that relate to computer-implemented inventions, provided that the human need that is satisfied is clearly identified and also the energy or matter transformation that the invention allows. As opposed to other jurisdictions where there are court criteria, Mexico has only this definition to provide certainty regarding eligibility as a mechanism to determine if the matter is subject to eligibility. Therefore, in order to obtain a patent the applicant must demonstrate that the invention provides more than only a result based on data processing "in abstract", that is to say, that such data provides in practical and tangible way, a solution to a specific problem that would not occur in abstract.

Another exception to patentable subject matter in TRIPS, which in fact led to the Doha Declaration content and its further implementation for WTO member states, is medicine practice-related inventions. TRIPS gives contracting states the option to exclude from patentability "diagnostic, therapeutic and surgical methods for the treatment of humans or animals." In a way medical practice exceptions relate to the same TRIPS principle of preserving health and avoid the ethical problem of preventing any medicine professional from practicing something that will save a life.

Mexican law includes in Article 19 such exclusions expressly in paragraph VII. However, other related inventions such as second medical uses, new dosage forms and other inventions that impact the health care industry are patented in Mexico in practice provided that the fundamental novelty, inventive step and industrial applicability requirements are met.

This exception to patentability is considered in Mexico under Article 4 of the IPL, but only limited to public ordre and morality. In practice the most common rejection under this provision by IMPI is in biotechnology for stem cells of human embryo origin and inventions using such stem cells. In practice, the availability of non-embryo origin has made it possible to avoid objections related to the use of human embryos for stem cell related technology. Nevertheless it is a paradox that a technology may be excluded from patentable subject matter as attempting to human life while it enables the protection of another human life by providing an unprecedented health care solution, and therefore, the question arises on whether this dilemma should be evaluated by the patent office itself or not.

Mexico, as a Civil Law country needs to adapt patent law to new realities, particularly after 20 years since its latest significant update. However, this does not mean necessarily that what is helpful must change, and there are unique features of the Mexican patent law that are actually very useful under the current environment.

The rationale behind ineligible subject matter at large is based on three major principles:

• Avoid granting protection to ideas that occur in abstract.

• Avoid granting protection to things that naturally are available to mankind without an inventive effort.

• Avoid granting protection to inventions that attempt against life or otherwise attempt against society and human kind at large.

Mexican law, by including a definition of invention requiring matter and energy transformation potential and the solution of a concrete human need addresses expressly the first two. It is more up to IMPI how to apply this definition in order to interpret the inventions that on a daily basis are examined in the patent system. However, the exceptions to this definition need to be revised as formerly abstract ideas can now materialise in the real world and clearly some go beyond the TRIPS flexibilities, particularly in the field of Computer Implemented Inventions.

The above makes the task difficult since the developments continue evolving while our law remains still and it is certain that there is subject matter that could not be evaluated under the current regulations.

The third principle is perhaps the one that needs further clarification and regulation not only in Mexico but worldwide. Patent offices have a lot in their hands already and it might not be in the best interest of the patent system to convert them into ethics committees, considering that most inventions can be used for good or bad.

Hector Chagoya
		Hector Chagoya is Partner and Director of Patents & Technology at Becerril Coca & Becerril. With 19 years of IP experience in many technology and industry areas, he is currently in charge of the patent practice of the firm, and of consulting services for leveraging value from IP assets. He focuses his practice in leading working teams on patent drafting, patent prosecution, technology intelligence studies, IP assets valuation, IP negotiations, technology evaluation and substantive issues of patent litigation. Hector holds the Certified Licensing ProfessionalTM credential (first in Mexico). In addition, he is also Qualified Expert in Engineering Economy at CONIQQ, a subject that he taught as part of the Chemical Engineering program at Universidad La Salle, where he was part of the Faculty for 15 years. He also was professor of Thermodynamics, Chemical Equilibrium and Project Evaluation. He has also acted as expert witness in several patent litigation cases.

Claudia Campos
		Claudia Campos is a Bachelor in Mechatronics Engineering. She graduated from the Universidad Anahuac Mexico Sur in 2005, and obtained a Master’s Degree in Business Administration with a Specialisation in Marketing from the same university in 2007. During the school year of 2006-2007 she performed as a teacher in Chemistry and Physics. In 2015 she obtained a Law degree from the Universidad Del Valle de Mexico (UVM). Claudia joined Becerril Coca & Becerril in 2007. As Technical Manager of Patents & Technology, Claudia monitors and supervises the Technical Patents Department activities regarding the prosecution of patent applications, industrial designs, and utility models during the substantive examination phase. Additionally, she focuses her practice in prior art searches, patentability analysis, and drafting of new patent applications. She provides her clients with specialised advisory in the technical and legal fields to find the best way to obtain a patent.