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Evaluation and Patentability Criteria for Software in Mexico

Nowadays, computer-implemented inventions (CIIs) are subject of an intense debate in the patent world, since computers are an essential technical element for the implementation of specific processes that contribute to achieving the goals outlined in the current technological developments.
However in Mexico, the Industrial Property Law (IPL) in Article 19, section IV recites: “For the purposes of this Law, there won’t be considered as inventions: The computer programs”. Said definition is broad, and rather vague, because it does not clearly define the scope or limits that inventions incorporating some form of execution or partial contribution by a computer could have, and obstructs any type of protection that said inventions could receive through patents.

In other jurisdictions such as the U.S. (USC) and the European (EPC), despite they also indicate in their own laws that computer programs are not patentable, they particularly consider the CIIs as patentable if they meet the three basic requirements for patentability and demonstrate that through the invention, in conjunction with the computer program, a technical problem is resolved, and not just a purely computational one.

Patent protection for the contribution of the computer program, is given by a claim called “Beauregard” claim, which indicates a computer readable medium (CRM) comprising codes or instructions capable of being executed by a computer or processor, since the specific programming creates a special computational function that is limited to the use of the particular elements of the invention, as were claimed in the main embodiments of the invention.

The reason of such a claim is intended to provide protection to the method and what the device was configured for, and the scope of protection that is given is to avoid that when the steps of the method are stored in a CRM, they could be subject to piracy or partial or full reproduction by unauthorized parties.

However, despite the similarities between the IPL and the EPC and although usually the Mexican Institute of Industrial Property (IMPI) requires conforming the claims to claims US and European patents, in practice the IMPI usually requests that such claims are eliminated by referring to computer programs, for the simple fact to mention such instructions or codes without delving into the content or technical contribution of the invention.

In conclusion, despite the efforts made by International Patent Offices for providing a full and adequate protection to CIIs inventions and despite the IMPI is intending to expedite examination signing into international treaties (such as the Patent Prosecution Highway, PPH) and using said Offices foreign examination criteria, unfortunately there is still no trend for the evaluation, analysis or allowance for CIIs, which ends up affecting the applicants and the growth and development of our national industry.

Carmen Sánchez-Puelles