QUALITY OF PATENTS IN MEXICO

Arturo Broca
Tekugo General Manager

I am consultant on assessment, drafting, formalities, prosecution and use of patents and also an expert in patent analysis aiming to devise strategies of protection and legal defense. I worked at Mexican Institute of Industrial Property (IMPI) from 1999 to 2012 as patent examiner so I have been involved in IP matters for more than 19 years and since 2012 as a Registered External Training Agent from Secretariat of Labor and Social Welfare in Mexico, during my career I have noticed that the national inventor is not typically aware of the advantages related to the protection of their inventions.

When the national inventor creates a technical solution to a current problem, they will commonly ask themselves: “Is protecting my invention worthwhile?” , “Will I be able to sell my invention?” While searching for the answer to these questions, time goes by, and they fail to submit their protection applications to the IMPI. The following graph shows the low numbers of patent applications; in the year 2017 the IMPI received a total of 17,184 patent applications, decreasing in comparison to the year 2016. How many of these 17,184 patent applications do you think were filed by Mexican inventors?

The reality is that in Mexico many inventors do not trust in the Mexican patenting system and decide to not make use of said system and in other cases the inventor even do not know about the process involved to protect the invention. When they learn that it is necessary to protect their inventions in order to be able to transfer or license them, in most cases, Mexican inventors will personally draft their own patent applications and, due to drafting or filing errors, they fail to get protection for their invention. In other words, while in many other countries it is not incorrect for the inventor to personally draft their own patent application, we must nevertheless take into account that, as far as the Preparation of Patent Applications (Patent Drafting), the preparation procedure involves certain extremely critical and special steps that the inventor cannot resolve on their own due to lack of experience.

Even though the above is one of the issues that influence the low number of patent application submissions by Mexican inventors (in 2017, the IMPI received a total of 1,334 patent applications by residents), it is not the only one, as other factors exist that contribute to worsening the issue.

In this discussion article, we will analyze the importance related to not only reducing the factors of a low submission of patent applications in Mexico by residents, but also focusing on a solution to receive patent applications that are sufficiently solid so as to be granted and that they have a high possibility of commercialization (in 2017, from an average of 1,334 patent applications by residents, only 407 were granted).

Although we know that patent applications submitted by Mexican inventors to the IMPI are very few, there is another relevant factor, which is the lack of quality in the filing of said applications. The graphs of figure 1 present the statistics of patents in Mexico (up to December 2017).

The most preoccupying matter is that of the 1 334 patent applications submitted by Mexican inventors in 2017, only an average of 407 are granted – a very low number, I would say. In other hand in 2017, 8370 patent applications were filed by US inventors an around 3950 were granted as shown in figure 3. It is therefore important to increase the QUALITY of the patent applications submitted by Mexican inventors, and NOT ONLY CONCERN OURSELVES WITH THE QUANTITY.

Based on my experience as Patent Examiner and now as Patent Agent and Technology Manager, I have noticed that the main cause for which a high number of patent applications submitted by Mexican inventors are not granted is that they are unable to explain their invention in clear writing and, more specifically, to define precisely the subject matter to be protected in the claims, along with, in some cases, the inability to carry out a prior art search and a patentability assessment (which is more difficult).

Of course, the IMPI, on finding that the invention is not clearly explained, will require the inventor by an officia action to correct this lack of clarity. Therefore, the inventor will face a number of factors: the proceedings, time, and expenses, since each reply to the IMPI generates a cost. Additionally, the reply must be precise and appropriate in order to avoid being notified of further requirements or official actions. All these proceedings, time, and expenses would take their toll on anyone, which is why on many occasions inventors tend to cease their attempts to acquire the patent and prefer to abandon the enterprise.

As a cultural summary on the subject, I would point out that protection can be sought for anything, even the wheel if you wish; however, in Mexico as in most countries, a patent is granted only to inventions that are NEW and the result of an INVENTIVE STEP. Now you may wonder who decides whether an invention is NEW and the result of INVENTIVE STEP. We attempt to briefly describe this as follows:

In Mexico, the IMPI performs an investigation through the patent databases with a Patent Examiner, finding documents of inventions similar to the what is claiming in the patent applications. Once the documents or closest prior art have been found, an assessment is performed to determine whether the invention is NEW; this criterion is based on the answer to the question: “Is there something in the state of the technique that is equal to the invention?”; if there is nothing that is the same at a worldwide level, the invention can be determined to be NEW.

If the invention is NEW, the Patent Examiner will proceed to assess the INVENTIVE STEP of the invention. With respect to this, Article 12, Section III of the Mexican Law on Industrial Property says:

“Inventive Step, is the creative process whose results are not deduced from the state of the art in an evident form by the person skilled in the art;” [Emphasis added].

Concretely, and to aid in the understanding, this criterion is based on the answer to the question: “Would be obvious for the person skilled in the art to arrive at the invention?”; the assessment of this criterion of patentability is done with a special method, so as to determine, as objectively as possible, the probable lack of INVENTIVE STEP. The special method is called "problem solution approach" similar to that one used by the European Patent Office.

From the previous brief explanation and as per my own experience, I am confident that it is not always the case that the problem Mexican inventors have when filing their patent applications is the lack of novelty and/or inventive step, but rather other problems include:

1.       An inappropriate filing of the patent applications, due to deficient drafting and filing of the information.

2.       Lack of knowledge of the use of the PATENT DATABASES to investigate what is already in existence in the technical field of the invention (prior art).

3.       Lack of knowledge of the way the INVENTIVE STEP of the invention is assessed.

4.       Discouragement or lack of the economic capacity or the time to resolve the IMPI’s objections when the Examiner in charge of the application notes a lack of clarity (as per point 1) or when the Examiner detects a possible lack of inventive step.

5.       Previous divulgation of the inventor’s own invention (not taking into account the 12 month grace period established by in the Law on Industrial Property), in published theses, papers, conventions and/or exhibitions.

The main topic of this article is to point out the importance of the QUALITY IN FILING PATENT APPLICATIONS BY MEXICAN INVENTORS; whether the inventor by himself drafts the patent application or has the support of a patent agent, this issue must be considered as a key factor in order to increase the number of patents granted to Mexican applicants. As can be seen in Figure 2, while an average of more than 50% of the applications submitted by U.S. inventors are granted, the patents applications granted to Mexican inventors are around 30%.

Here, it is worth mentioning that one of the first steps in order to asses if “it is worth protecting” is based on a market study which will provide the main indication to assign a value to the protection of the invention. This topic will be broadly discussed in another entry, since there is so much to discuss.

The factors involved in attaining an appropriate QUALITY IN FILING OF PATENT APPLICATIONS, to the best of my knowledge, are:

• ·      Generating a market study, that is, firstly sell the invention, and, through this study, arrive at aspects that may be important in preparing the protection strategies by means of the corresponding applicable legal concept (Patent, Utility Model, Industrial Design).
• ·         Delimitation of the scope of the invention, that is, to define concretely the technical problem that the invention solves and the manner in which said problem is solved, in a sufficiently clear manner.
• ·        Assessment of the NOVELTY, the INVENTIVE STEP and the INDUSTRIAL APPLICATION of the invention. This part is fundamental since, with the delimitation of the technical problem and the solution proposed by the invention, an investigation of the state of the technique must take place to obtain the documents most similar to the invention in order to assess the invention against what has been found and obtain a PATENTABILITY ANALYSIS. The patentability analysis will allow us to know the scope of the invention in order to write the claims, as well as to have an idea of the possible protection for the invention, as far as the IMPI, through the Examiner in charge of the patent application, is responsible for evaluating the NOVELTY, the INVENTIVE STEP and the INDUSTRIAL APPLICATION of the invention.
• ·         Drafting the patent application in a clear, concise way, including also the adequate presentation of the illustrations, so as to show the solution to the technical problem proposed by the invention, in a way that it supports the matter asserted in the claims.
• ·         Proper examination with close and clear communication with the IMPI Examiner in charge of the patent application, that is, the Examiner’s point of view and objections, which help ensure the patent application complies with an appropriate quality, in such a way that once the IMPI requirements have been met, the patent is granted.

In the previously mentioned factors, the main performers involved in reaching the goals are:

1.       The Inventor. It is the inventor’s responsibility to ensure that the description of the invention at the moment of the patent application is sufficiently clear. If the description lacks clarity, the IMPI shall issue an official action requesting the correction of this issue, in this case the inventor will need time and money, since a fee must be paid for every official action of IMPI. The inventor has to explain very well what is the technical problem solved by his invention and the way the invention solves that problem.

    First I would suggest the Mexican inventor to get professional services from a patent agent. As a second suggestion I would invite the inventor to look for support programs from the government in order to file a patent application with high quality standards, some of them such as follows:
i)  There is a program that helps the inventor to get a patentability assessment of his invention and the patent drafting by free, it is called IMPI-FUMEC-NAFIN.

ii). The is another program that refunds the fee rates payed by the inventor for the patent application filed at IMPI, it is called “Programa de Fomento a la Protección de la Propiedad Industrial en el Estado de México”. 

    The fact is that if the inventor doesn’t know how to draft a patent application he shouldn’t prepare his patent application by himself unless he were well trained by a profesional trainer.

2.       The Patent Agent / Technology Manager. This performer has the same responsibility as mentioned above, that is, to generate a very clear and concise description, as well as defining in a concrete manner the novelty of the invention (drafting claims), and, very importantly: a) Advising the inventor about the patentability of the invention with respect to its NOVELTY and/or INVENTIVE STEP, it means that the Patent Agent has to know how to carry out a patentability assessment not only to provide the inventor the search report; b) Defining the best strategy for protection with commercial purposes.

3.       The Patent Examiner. He has a key role, since he is the judge (the authority) that will assess the patentability criteria of the invention; He or She searchs through databases to see what similar inventions are already known then the invention is examined in detail. The granting of the protection for the invention will depend on their effectiveness and experience in carrying out search to get the closest prior art and his or her patentability assessment skills. The Patent Examiner must always consider that based on article 6, section III of the Mexican Law on Industrial Property, he has the faculty to process and, when applicable, grant patents, and not halt or block said grants of patents to mexican inventors. To be the authority doesn't mean The Patent Examiner has all the reasons to reject a patent, he or she must demonstrate at least with an efficient method that the invention lacks of Novelty or Inventive Step, this is hard to be understood by novel patent examiners hired by the IMPI. In this case I would suggest if the patent examiner finds patentable subject matter in the substantive examination he should let it know to the Mexican inventor even that some claims lack of inventive step such as is practiced by the USPTO or the EPO.
   At IMPI there are around 125 patent examiners divided in four main areas such as mechanical, chemical, electrical and biotechnology, in revcent years some of the patent examiners are hired only by a period of time and most of them are patent examiners with more than 5 years of experience in patent substantive examination who were hired by IMPI in a permanent way.

4.       The Person Skilled in the Art. This is a very important performer in this list. The Person Skilled in the Art is present in multiple occasions in the Mexican law dealing with patents but as you know no body has seen him as a physical entity.

As you can see, it is very important to be intimately acquainted with the Patent Protection System in Mexico, and, moreover, to generate human resources sufficiently trained in order to attain a better QUALITY IN FILING OF PATENT APPLICATIONS from our Mexican inventors, which will ultimately be reflected not only in a higher number of applications filed to the IMPI, but more importantly, in reaching a higher number of patent grantings and granting value to their commercial strategy.

At TEKUGO, we are wholly aware of our responsibility in spreading the knowledge of Industrial Property as well as being involved in the creation process and protection of inventions from Mexican inventors, providing adequate quality standards in the drafting of the patent applications, which is supported by our extensive professional experience in the subject. We also have a special discount for independent inventors, through our “inter-inova” program, meant to confront the problem in Mexico of the low number of patent applications submitted by and granted to Mexican inventors.

Author: Arturo Broca (Mexico).

Date: August, 6^th 2018.

Graphs in figures 1 to 3 were generated by myself from data recovered from IMPI databases.