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Patents rejected for lack of proof

by Pedro Herrera

In the past three years, the Mexican Institute of Industrial Property has increased the number of office actions objecting to a claimed invention due to a lack of support in the description, which has resulted in the conclusion that applicant is seeking a greater scope of protection than originally claimed.

The objection is based on article 47 sections I and III of the Mexican Industrial Property Law (IPL) and article 28 section VII of the Mexican Patent Regulations. They establish that: 47-I) The description of the invention shall be sufficiently clear and complete to allow it to be fully understood and, in such a manner as, to guide someone having skills and knowledge in that field to its implementation. 47-III) The claims shall be clear and concise and may not be broader than the contents of the description. 28-VII) The description shall mention the best method, or the applicant’s intended best means, to carry out the claimed invention, where this is sufficient, the mention shall take the form of practical examples or specific applications of the invention that are not of a nature that is alien to the invention described, and with reference to the drawings, if any.

The provision “a description of the invention, which shall be sufficiently clear and complete so as to be fully understood and where appropriate to serve as a guide for a person of ordinary skill in the art to make it” has been applied by Mexican examiners as a description with examples proving that the claimed subject matter has been fully tested, that the subject matter to be claimed must be duly supported by the description, and that in addition it must be exemplified. The examiners follow the criterion that just mentioning the matter seeking protection does not serve as a guarantee that it has been brought into practice. Therefore, all data to be included in the description must be obtained from the tests carried out in the experimental procedures. Failure to disclose the best known method to carry out the invention will not invalidate the invention; however, any claimed subject matter which is not supported and tested by practical examples will be objected for a lack of support. It would seem that the provisions of articles 47-I and III of IPL and 28-VII of its Rules are essential formal requirements to obtain a Mexican patent. Therefore, applicants must take into account that in order to overcome the objection of lack of support of the claimed subject matter they must submit strong arguments, preferably citing the page and line where the claimed subject matter is supported and exemplified. It will be difficult to surpass such an objection and in the end the examiner may ask to delete it from the claims under examination.

Source Managing Intellectual Property Magazine, Apr 2013