Surge of Patent Application Final Rejections Provides Unique Opportunity for Patent Precent Making

by Osvaldo Amaral

In the past year or so, the Mexican Patent Office has issued record numbers of arbitrary and criteria-less final rejections for Mexican patent applications in basically across all technology areas. Most of the final rejections have been directed to computer-implemented inventions and business method-related inventions.

Under Mexican patent law and practice, a final rejection closes the prosecution of a Mexican Patent application and can only be challenged through an appeal before the Mexican Patent Office or the Federal Court for Tax and Administrative Affairs (FCTAA). While in an appeal before the Mexican Patent Office also known as a review recourse, the Mexican Patent Office serves as administrative authority and usually ratifies its initial decisions unless an obvious mistake was made in the issuance of the final rejection, in appeal before the FCTAA also known as a nullity trial, the applicant can request that the final rejection be declared illegal and order the Mexican Patent Office to grant the patent taking advantage further of a de novo standard of review.

Given the limited number of patent precedents found in Mexican jurisprudence as well as the lack of clear guidelines and regulations governing the interpretation of most Mexican patent legal provisions, this surge in final rejections provides a unique opportunity for current applicants and practitioners to push for Mexican patent legal certainty through the federal courts. In this respect, most cases will be cases of first impression. Thus, there has been never a better time to position Mexican patent law and practice in line with the practice of major patent legal jurisdictions regarding subject matter patent eligibility backed up by international treaties and persuasive and progressive international patent jurisprudence and practice.

Source: Managing Intellectual Property, Apr 2012.