The legislation on patents - the Industrial Property Law - establishes that a patent application must include detailed sections, such as the specifications, drawings and their description, claims and an abstract. Professionals directly involved with this branch of intellectual property are familiar with the information contained in these sections, as this knowledge is critical in order to deal with objections raised by the Mexican Institute of Industrial Property (IMPI) in the substantive examination of a patent application.
The set of claims of a patent application contains the subject matter for which the rights conferred by the patent will be granted. Therefore, this subject matter must be properly supported in the original application as a whole (Article 55bis of the Industrial Property Law). Thus, if the intention is to protect a composition containing elements A, B and C, which are duly disclosed in the application, but this composition also claims an element D that has not been described in the specification, the composition would not be granted patent protection. The inclusion of element D would extend the scope of protection of the patent to an additional element that was not initially considered in the specification; this would imply claiming additional matter. But what happens when the application describes this element D and the examples include compositions with only elements A, B and C?
In this regard, Article 47(1) of the Industrial Property Law and Article 28(7) of its regulations state that the specification must include mention of the best method known by the applicant to implement the invention, and that this mention must take the form of practical examples or specific uses of the invention.
To receive occasional objections requesting that the claims be limited solely to the content of the examples is understandable, as there are patent applications that could justify such an approach. Selection patents - intended to protect a specific selection of an already existing invention - are a clear example of a patent application that receives such a request by the IMPI, since it necessarily requires either examples that demonstrate a technical advantageous effect for that precise selection or the exemplary uses to demonstrate the patentability of the application, which in these cases is usually compromised in view of the closest state of the art. It...