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Business methods and software-related inventions

BY OSVALDO AMARAL
MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, SEPTEMBER 2005
Applicants interested in protecting business methods and software related inventions in Mexico are not completely prevented from protecting these types of inventions if certain considerations are taken into account. Although Article 19, Section III of the Law of Industrial Property expressly deems business methods per se and software per se to be unpatentable, an applicant can rest assured that the Mexican Institute of Industrial (IMPI) has been allowing and issuing business methods and software-related patents.

Outside the realm of Article 19, Section III of the Law of Industrial Property, there are no laws, regulations, jurisprudence or guidelines to guide an applicant interested in protecting a specific business method or software-related invention in Mexico. This generalized lack of guidance is reflected in the fact that Mexican examiners tend to automatically label the slightest vestige of characteristics of a business method or software as a business method per se or a software per se. This is especially true when the Mexican examiner finds no corresponding and equivalent European patent that has not been allowed or granted claiming the same priority as the Mexican pending patent application.

However, in practice, IMPI is guided by the patentability guidelines established by the European Patent Office and thus views a software-related invention or business method as patentable in Mexico if a technical and tangible effect is obtained by using the software-related invention or business method. The technical and tangible effect must also be novel, inventive and capable of industrial application.

With respect to software-related inventions, apparatus, process, product or medium claims are likely to be considered patentable by a Mexican examiner but signal, data structure and computer programs claims are not. For the purposes of drafting strategy for a software-related invention, the specification should describe the functional modules of the software, the hardware elements and the interrelationship between the software modules and the hardware elements. With respect to business methods, claiming the method of doing business in terms of having a technical and tangible effect such as being implemented on a communications network is also likely to be considered patentable by a Mexican Examiner.

In summary, business methods and software-related inventions can be protected in Mexico despite the lack of guidance and an express position on the part of IMPI.